To trademark a word you need to know how to register a single word as a trademark with the USPTO and is a word, phrase, sign, symbol, or logo to identify owner.9 min read
Updated September 6, 2021:
Do you want to learn more about how to trademark a word? This involves registering a single word as a trademark with the U.S. Patent and Trademark Office (USPTO). A trademark is a word, phrase, sign, symbol, or logo used to identify a product’s owner. Trademarks give exclusive rights to a person or company to use a specific mark within an industry.
What Is a Trademark?
Any design, logo, symbol, name, or word that distinguishes a product or service from those offered by its competitors is a trademark. If you own a trademark, you can prevent others from using it. The benefit of having a trademark is that it represents your brand and over time may come to stand for quality. Someone with similar goods or services can’t use the same trademark.
You own a trademark if you are the first to use it in commerce, even if the word or mark in question is not registered.
What Are the Benefits of Registering a Trademark?
First, you file for a trademark application. Many trademark owners wonder whether they should go through the trouble of federal registration. These are some of the main advantages of the application process:
- If you are seeking legal remedy for infringement and the trademark is registered, the defendant must bear the burden of proof.
- Other companies using similar trademarks in other states cannot claim territorial rights. State trademarks provide protection only in your state, a concern in the increasingly global marketplace.
- Federal trademark registration can be used to apply for trademark protection in other countries.
- If infringement occurs, you can litigate in federal court.
- Others will be deterred from using the mark.
- You may use the federal registration symbol.
- Your trademark will be listed in the USPTO’s online database.
When you trademark a word, you give a person or company exclusive rights to connect one brand with that word. You can trademark a word that identifies your company or your products.
Register your trademark with the United States Patent and Trademark Office (USPTO) to protect your trademark throughout the United States. A trademark registration with the USPTO is a registered trademark and gets marked with the registered trademark (®) symbol.
You don’t have to register a word with the USPTO to get trademark status. A word is a trademark if that word identifies a brand, regardless of whether the word itself is registered. However, unregistered trademarks with the USPTO are only trademarked within the company’s geographical area. Trademark rights for an unregistered mark belong to the company that first used the mark. Use the trademark symbol (TM) for a trademark that isn’t registered with the USPTO.
Why Is Knowing How to Trademark a Word Important?
When you trademark a word, your competitors can’t use that word to identify their products. A trademark:
- Sets companies apart from one another
- Protects brand integrity
- Prevents unfair competition from customer confusion or deception
A trademark registration with the USPTO lets you take legal action against companies who unjustly use the mark. This application process helps with trademark protection. You can sue for damages, attorney fees, and court costs if someone illegally uses your trademark. This illegal use is a trademark infringement.
When you trademark a word, you don’t protect it from use in everyday speech use or informational material. A trademark also doesn’t stop industries that don’t compete with your business from using the word. By having a federal trademark registration with the government you obtain national trademark protection rather than a state law protection.
When Should You Trademark a Word?
If you come up with a good catch phrase, you may want to trademark it. It will be the first step to identify your goods and services.Trademark a word if it identifies your brand. You want to protect your brand and set your products apart from competitors’ products. It is your choice if you want to have your trademark protected under trademark law.
To obtain a trademark registration you must obtain it from the U.S patent and trademark. USPTO registration isn’t required for trademark status. However, a trademark gives you these benefits:
- Nationwide ownership
- Public notice of ownership
- Legal protection against infringement
- Use of the registered trademark symbol
- Listing in USPTO databases
- Ability to apply for trademark status in other countries
How Do You Create a Strong Trademark for a Word?
You need to have a strong word for your trademark. Made-up words and words that aren’t directly related to your product are the strongest words to trademark. Consider some word types when creating your trademark:
- Invented words: You can’t use these words in any context other than with your brand. For example, Adidas has no meaning other than the name of the company.
- Arbitrary words: Arbitrary words are words that exist but aren’t related to your product. An example of an arbitrary word trademark is bumblebee for Bumble Bee Seafood.
- Suggestive words: Suggestive words speak to a trait of your product but don’t directly refer to it. For example, the word Patagonia has no direct connection to outdoor clothing, but the word suggests imagery of outdoor adventures. Suggestive words are good trademarks, but they are less strong than invented or arbitrary words.
- Descriptive words: Descriptive words describe how you use a product. Descriptive words are difficult to trademark. An example of a descriptive word is Red Delicious for a type of apple.
- Generic words: Generic words that name a product can’t be trademarked. So while Apple Inc. can trademark Apple when talking about its products, a company that sells apples can’t trademark the name Apple.
Do a trademark search to ensure that it’s not in use.
How Do You Protect a Trademark for a Word?
When you trademark a word, you gain rights over the word. But you can lose the rights if you don’t protect your trademark. Trademark protection includes phrases, words, symbols, and sounds. So you should file a trademark application to protect your services.
1. Enforce Proper Usage
You should enforce proper capitalization and use of the registered trademark symbol wherever your trademarked word appears. If you don’t enforce proper use of your trademark, the word could become a generic name for the product. If a word becomes generic, you can lose the word’s trademark.
Dumpster is an example of a word that became generic and lost its trademark. Dempster Brothers created the word dumpster for their trash disposal brand. Over time, the word became a generic term for garbage containers.
Failure to enforce proper use of and attribution for your trademarked word, including trademark symbol usage, can also cause trademark dilution. Trademark dilution occurs when a trademarked word becomes less unique, gets adopted as a household name, or results from both situations. Your trademarked word could also get used in another industry. Dilution is only considered a type of trademark infringement for famous trademarks.
2. Protect Against Infringement
Infringement happens when a competitor illegally uses your trademarked word. File an infringement lawsuit to stop illegal use of your trademark. A lawsuit can result in an order for the competitor to stop using the trademark, to receive monetary damages, or both.
Stopping infringement protects your brand and prevents customer confusion. You should talk with a trademark lawyer before you file an infringement lawsuit.
Frequently Asked Questions
- What’s the difference between a trademark, a copyright, and a patent? What about a service mark (SM)?
Trademarks protect the words or symbols that identify a product. Patents protect the products themselves. Copyrights protect artistic and literary works. Patents and copyrights expire after a set term, but you can renew a trademark every 10 years if the word remains in use.
A service mark is similar to a trademark, but this mark identifies a service instead of a product. If your company provides a service, you may need a service mark instead of a trademark. Some marks are both service marks and trademarks. For example, the FedEx logo is a service mark for FedEx’s shipping services. When the logo appears on shipping supplies, it’s a trademark.
You can identify both USPTO-registered service marks and trademarks by the ® symbol. An unregistered service mark gets identified by SM rather than TM. The registration process for trademarks and service marks is the same.
- Can I trademark a common word? What about a catchphrase or a word on a T-shirt?
You can trademark some common words. If the word has an arbitrary relationship to the product being named, the word may qualify for a trademark.
You can trademark a catchphrase if you use the word for business and it isn’t a common phrase. For example, boxing announcer Michael Buffer trademarked «Let’s Get Ready to Rumble!» Since the catch phrase is for a business and doesn’t exist in everyday speech, it’s protected by a trademark.
You can trademark a word on a T-shirt if the word identifies the producer of the T-shirt. LACOSTE is a trademarked word that appears on T-shirts and identifies the T-shirt source.
- What words can’t be trademarked?
Words that don’t serve to identify the source of a product can’t be trademarked. Generic words, offensive words, and certain proper names can’t be trademarked. Words that are already trademarked for goods within the same industry can’t be trademarked.
- Should I trademark an entire logo, or should I trademark only the words?
Trademarking words is usually better than trademarking a logo. When you trademark a logo with words, you can only protect that exact logo. If the logo’s design changes, the new version isn’t protected. If the logo has both a symbol and words, you can only protect both parts as a unit. The symbol alone or words alone wouldn’t be trademarked unless registered separately.
If you trademark words alone, without any styling such as color or font, the words become trademarked no matter how they appear. It’s best to trademark the words, not the logo, as long as the words alone are unique enough to identify your brand. You can file a separate trademark application for the logo.
Steps to Trademark a Word: Trademark Application
- Consult a trademark attorney. Trademarking a word is a complex process, so talk to a trademark attorney early in your planning. To find a lawyer with trademark experience, search the USPTO website for an attorney that has registered other trademarks.
- Check for eligibility. Before you apply to trademark a word, make sure the word is available for trademarking. Search the USPTO Trademark Electronic Search System to see if that word is already trademarked. Since federal registration isn’t required, you should also search state databases, the internet, and other companies in your industry. Look for both exact matches and marks that are similar to one another.
- Register domain names. While not required for trademarking a word, make sure that the domain name for your brand is available. The strongest brands are those that are consistent across platforms. Register .com, .net, and .org extensions.
- Establish ownership. Once you’ve decided on the word you want to trademark, establish ownership of the mark. Begin using the word in branding and business. You’ll need to show the word’s connection to your business to register it as a trademark with the USPTO.
- File an Intent to Use. You should file an Intent to Use application while you’re establishing ownership. This application states you intend to trademark a word, but first need time to use it. An Intent to Use reserves your right to trademark the word for six months. No one else can trademark the word with your Intent to Use on file. You can renew the Intent to Use every six months for up to 24 months.
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File a Trademark Application. To register a trademark, you need to file a trademark application with the USPTO. You’ll need to give:
- Your name and address
- The word you want trademarked
- A description of the product you want branded
- The date the word was first used in commerce
- An example of the word in use
- Pay the filing fee. Trademarking a word requires a trademarking filing fee. This fee ranges from $225 to $400 and is not refundable. Protect your investment by working with a trademark attorney before filing.
In most cases, it will take about four to six months for your trademark application to be approved. At that point, a company who thinks that your registered mark is infringing on its existing trademark has 30 days to file an appeal. After that period ends, you’ll receive a certificate of registration in the mail.
You should seek the help of a trademark attorney before applying to trademark a word. Post your legal need through UpCounsel to get free custom quotes from the top 5% of trademark attorneys instantly. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies such as Google, Menlo Ventures, and Airbnb.
Clients oftentimes call me to ask if they can get a trademark registration on a «common word» or a «common phrase.» The question itself is always asked with a doubtful tone, as if they already know the answer is «no.» To their surprise, however, the answer is a resounding «YES!». Or at least in some cases it is.
Current Example
Can you trademark a phrase or common word? Chances are, we’re all familiar with at least one generic word that is registered as a trademark. You may even be using one of their devices to read this.
Apple
One example that I like to give to clients is that of Apple Inc., the famous computer and software manufacturer. The word «apple» is a very common word, and yet Apple Inc. had no problem trademarking the term «APPLE» for computers and computer programs. Nor did Apple Rubber Products, John Middleton Co., and Scholastic, Inc. All of those companies, and many others, own trademark rights to the single word «APPLE».
Why was this allowed? Because the word «apple» is an arbitrary word when used in connection with the manufacture and sale of computers and computer programs, or tobacco products, or educational materials. That is, there is nothing about these products that relates to «apples». Accordingly, the term «APPLE» is actually a pretty strong trademark, as is the case when you apply a completely arbitrary term (however common it may be) to promote your products or services.
The case would be much different if someone wanted to get a trademark on the word «APPLE» in connection with the sale of apples (the fruit). In that case, the name «APPLE» would simply be a generic term for the type of goods being provided, namely, apples. Because of this, the United States Patent and Trademark Office (USPTO) would never issue a federal trademark registration for the term «APPLE» if the only products being provided were fruit products, even the best trademark attorney wouldn’t be able to help you with that attempt.
The example of «APPLE» also illustrates an important point when trademarking a common word. Just because Apple Inc. has trademarked «APPLE» does not mean that they own the word in all instances. How could they, if Scholastic, Inc. and John Middleton Co., among many others, have also trademarked «APPLE»?
Past Examples
Language is ever evolving, shaped by centuries of iteration, elimination, and re-creation. Words fall by the wayside and some, for better-or-worse, storm our vernacular over the course of a matter of months. To a degree, however, many are unaware of how greatly our language is influenced by one of those most ubiquitous institutions in the world: commerce.
Throughout history, words have taken on meaning and left it behind, becoming “genericized” in our everyday language. Many of these were once trademarks; brands championed by entrepreneurs and industry tycoons whose achievements have so permeated our culture that they cease to belong to a single entity.
Kerosene
Of the myriad words in our language that used to carry a royalty fee, several were born at the advent of the Industrial Revolution. With savvy businessmen eager to profit from this innovative age, it is no wonder that many common items became the subject of trademark registrations. In 1854, Abraham Gesner, in conjunction with the North American Gas Light Company and the Downer Company profited from the trademark of the term Kerosene. The term, likely derivative of the Greek term for was, keros, is now used for any mixture of petroleum chemicals used for heating, fuel, or as an insect repellent.
Escalator
In 1897, Charles Seeberger redesigned a Coney Island novelty ride that transported passengers up a moving staircase. Manufactured by Otis Elevator Company, the Escalator became a part of the vernacular before being genericized in 1950 when the patent was lost.
Touch-tone
Silicon Valley’s Intellectual Property disputes over website names, brands, and even color schemes are a distant grand-child to the technology registrations of the mid-to-late century. One such mark is “touch-tone”, a technology invented in 1962 and manufactured by Bell Telephone. The term appeared in the 1960s as a trademark but did not receive widespread use until the 1980s.
Videotape
Another now-archaic technology that permeated prose was the “videotape”. Invented in 1951 by Charles Ginsburg and his research team and manufactured by Ampex, the term simply would not escape the home media conversation until the advent of DVDs in the late 1990s.
More Examples
Context is Everything
Trademarks are not about owning a word or phrase. It is about providing companies with distinctiveness and preventing consumer confusion. If another company producing computers or computer programs called itself Apple Hardware or Apple Electronics, then Apple Inc. could sue them for trademark infringement. But if Honda wanted to create a car called the Honda Apple, then Apple Inc. would have a very hard time getting them to stop. There is little to no chance that consumers would confuse Honda’s car with Apple’s computer products.
Further proof that registering a trademark does not bestow total ownership of the word: six different companies have trademark registrations for the word «TRADEMARK». There are another 10 going through the process with the USPTO. Yet each company uses the mark for its own distinctive products, and none confuses consumers by using the term in association with said products.
Common words or phrases are therefore well within the scope of trademark protection, so long as the words or phrases in question are not generic for the types of products or services being provided. After all, how else would TIME (the magazine), SHELL (the energy giant), and CATERPILLAR (the equipment manufacturer) get their trademark registrations? These words are common, but not descriptive of the company or its product (back to the «if Apple sold apples» idea.) As long as the common word is used as a brand name and isn’t descriptive or the product or service, your chances of success with the U.S. Patent and Trademark Office increase significantly.
There are Limits
On the other side, as with trademarking quotes, the USPTO will reject trademark applications for common phrases under certain circumstances. In 2014 the USPTO rejected nine applications for the phrase BOSTON STRONG, which grew from the 2013 Boston Marathon bombing. In rejecting, the USPTO wrote that «consumers are accustomed to seeing this slogan or motto commonly used in everyday speech by many different sources.» They decided similarly in 2002, when many companies filed trademark applications for the term «LET’S ROLL», which was associated with the passengers on United Airlines Flight 93 on September 11, 2001.
Phrases that become popular during news events are not the only common words and phrases the USPTO might reject. In 2007 the USPTO rejected a trademark application for the word PODCAST. In their final Office Action, they stated: «The mark immediately describes and names the characteristics and features of the goods. Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1) of Trademark Act.» Since the term podcast has acquired a meaning of its own, no one can trademark it by itself when used in connection with podcast-related products or services. There are a number of active trademarks that use the word PODCAST, but they all contain the standard disclaimer: «NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘PODCAST’ APART FROM THE MARK AS SHOWN».
How to Trademark a Word — Step by Step
There are 4 general steps to getting your trademark, as we covered here.
- Perform A Comprehensive Search
- File a Trademark Application
- Monitor Your Application
- Finalize Your Registration
More Detail on the Steps
Do you like wasting money? If so, then you can skip Step #1. For everyone else, performing a comprehensive trademark search is the most important step in the process. How can you expect the USPTO to approve your trademark application if you haven’t checked to make sure that it isn’t too similar to another registered trademark?
If you did your due diligence with Step #1, you’re ready to file your trademark application. In one way, it’s as easy as filling out an online form. In another way, there are some complexities. You of course have to fill out the application with care and attention to detail.
The third step is the easiest of them all, but it’s also the most frustrating. You’ll probably spend a lot of time refreshing web pages, hoping that there’s some update on your trademark application. Chances are that after you file your application you’ll have some waiting to do. The general timeline before you hear anything is 4 to 6 months.
Approval of your trademark application is a big milestone, but it is not the end of the process. Although the USPTO has many resources at its disposal, it cannot examine likelihood of confusion in the same way as trademark owners can. Any companies that believe your registration may infringe on their own trademark rights has 30 days to state its opposition. If no company opposes your mark, congratulations! The USPTO will send you a certificate of registration by mail.
The process can be complicated. And, given the long waiting periods, a mistake can set you back several months. The video below explains how we can simplify the process by doing the heavy lifting for you:
Steps to Trademark a Word: Trademark Application
- Consult a trademark attorney. Trademarking a word is a complex process, so talk to a trademark attorney early in your planning.
- Check for eligibility.
- Register domain names.
- Establish ownership.
- File an Intent to Use.
- File a Trademark Application.
- Pay the filing fee.
Contents
- 1 How much does it cost to trademark a word?
- 2 Can you trademark a real word?
- 3 What words Cannot be trademarked?
- 4 What is the cheapest way to trademark?
- 5 What are the 3 types of trademarks?
- 6 How do you own a word?
- 7 How do I make a new word official?
- 8 What happens if you use a trademarked word?
- 9 What are the 4 types of trademarks?
- 10 Can you trademark two words together?
- 11 Do you trademark or copyright a word?
- 12 Do you need a lawyer to file for a trademark?
- 13 Can I trademark something for free?
- 14 How long does trademark last?
- 15 Do you need a trademark to start a business?
- 16 Whats the difference between LLC and trademark?
- 17 How do I trademark a brand name?
- 18 Can anyone own a word?
- 19 How do I know if a word is trademarked?
- 20 Can a person buy a word?
How much does it cost to trademark a word?
If you have ever asked yourself how much does it cost to trademark a phrase, according to the current fee schedule on the USPTO, trademark registration fees cost $275 per mark per class. If you need an attorney’s assistance, the cost averages around $1,000 to $2,000.
Can you trademark a real word?
Common words and phrases can be trademarked if the person or company seeking the trademark can demonstrate that the phrase has acquired a distinctive secondary meaning apart from its original meaning. That secondary meaning must be one that identifies the phrase with a particular good or service.
What words Cannot be trademarked?
What Can’t Be Trademarked?
- Proper names or likenesses without consent from the person.
- Generic terms, phrases, or the like.
- Government symbols or insignia.
- Vulgar or disparaging words or phrases.
- The likeness of a U.S. President, former or current.
- Immoral, deceptive, or scandalous words or symbols.
- Sounds or short motifs.
What is the cheapest way to trademark?
The cheapest way to trademark a name is by filing with your state. The cost varies depending on where you live and what type of business you own. If you are a corporation or LLC, you can expect to pay less than $150 in most cases, while sole proprietors and contractors can pay anywhere between $50 to $150.
What are the 3 types of trademarks?
What Is a Trademark and What Are the Types?
- Arbitrary and Fanciful Trademarks. The strongest trademarks are those that are not in any way connected to the products they’re used on.
- Suggestive Trademarks.
- Descriptive Trademarks.
When you trademark a word, you give a person or company exclusive rights to connect one brand with that word. You can trademark a word that identifies your company or your products. Register your trademark with the United States Patent and Trademark Office (USPTO) to protect your trademark throughout the United States.
How do I make a new word official?
For a word to get into the dictionary, two main things must happen:
- It has to be in widespread use among a group of people. This means a lot of people are using the word and agree upon what it means, whether it’s spoken or in writing.
- That word has to have staying power.
What happens if you use a trademarked word?
What Is Infringement? You are infringing on the trademark rights of another entity when you use its registered trademark without prior permission. For example, if you create an electronic tool and decide to stamp the Apple logo on it, you would be committing trademark infringement.
What are the 4 types of trademarks?
Trademarks can generally be categorized into one of four categories of distinctiveness, from most to least distinctive: coined, arbitrary, suggestive and descriptive. Words and designs that lack any distinctiveness fall into a fifth category, “generic,” and cannot function as trademarks.
Can you trademark two words together?
No, unless you are using both variations of the mark in trade. A trademark covers not only the specific mark which is used in trade and commerce, but also marks which are confusingly similar to the used mark.
Do you trademark or copyright a word?
A word is not a trademark — unless it is used to identify a product or service for a business in commerce and distinguishes the products/services from others. Historically, a tradesmen who crafted a knife, tools, or guns would place his mark (i.e., symbol, initials, name) on the product.
Do you need a lawyer to file for a trademark?
No. You do not need an attorney to file an application for registration of a trademark with the United States Patent and Trademark Office (USPTO).
Can I trademark something for free?
You can not register a trademark for free. However, you can establish something known as a “common law trademark” for free, simply by opening for business. The benefit of relying on common law trademark rights is that it’s free, and you don’t need to do any specific work filling out forms, etc.
How long does trademark last?
In the United States, a federal trademark can potentially last forever, but it has to be renewed every ten years. If the mark is still being used between the 5th and the 6th year after it was registered, then the registration can be renewed.
Do you need a trademark to start a business?
Trademarks registered with the USPTO enjoy significantly stronger protection than ‘common law’ (unregistered) marks. This can make it significantly easier to recover your property. For example, if someone happens to be using your company name as their Twitter handle.
Whats the difference between LLC and trademark?
What is the difference between an LLC and a trademark? The short answer is—the level of protection they can provide. In the case of an LLC, your business name is only guarded within state lines after you register.State registration—Much like an LLC, your trademarked name is protected in the state of registration.
How do I trademark a brand name?
Registering a trademark for a company name is pretty straightforward. Many businesses can file an application online in less than 90 minutes, without a lawyer’s help. The simplest way to register is on the U.S. Patent and Trademark Office’s Web site, www.uspto.gov.
Can anyone own a word?
The short answer is there is no legal way for a person to own a word, and without the support of legal recourse, there is no way to enforce repercussions for perceived misuse or infringement. However, businesses and entrepreneurs can trademark common words under certain circumstances.
How do I know if a word is trademarked?
You can search all applied-for and registered trademarks free of charge by using the U.S. Patent and Trademark Office (USPTO)’s Trademark Electronic Search System (TESS). If your mark includes a design element, you will have to search it by using a design code.
Can a person buy a word?
You Can Own a Trademark, But You Can’t Own a Word.
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Can I Trademark a Word or Phrase?
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Legal Note: This blog article does not constitute legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.
Related Posts
Trademark Jacqui Pryor answers some of the most frequently asked questions surrounding trademarking – and in particular, trademarking words, names or simple phrases.
Can I trademark a word?
Yes, so long as it meets the overriding definition of a trademark – being a sign that you will use to distinguish goods/services from others. This means, not being too descriptive/generic, and also that it does not conflict with earlier filed trademarks in Australia. A single word can meet this requirement. For example “Google” is a single word, and acceptable and registered as a trade mark in relation to an internet search engine (and, a range of services and products offered under this trademark).
Can I trademark my own name?
Sure can. Again, noting it must meet the above definition and general requirements for trademark registration. Common names for common goods/services can be challenging. Examiners may determine the name is not capable of functioning as a trademark because others with that common name are likely to need to use it for those same sorts of goods/services. There are, at times, way to overcome this.
Further, if you happen to share your name with a famous/well known person, other objections might arise. If the examiners feel that use of the name is likely to mislead consumers into believing your products/services are endorsed by that famous person a report would be issued advising that the mark cannot be registered. Again, there can some times be ways to address this (for example, obtaining consent if viable from the well-known person, which provides their permission to use their name in the trademark).
Is it possible to trademark a generic word like “chocolate”?
As trademarks are registered in accordance with the goods/services they are used to identify, it is possible to register common words but not necessarily for their common goods.
Chocolate, if filed in relation to confectionery goods would be rejected as it’s way too descriptive. However, Chocolate applied for in relation to (for example) music instruments might be acceptable, as it is not the common name one would use to describe a musical instrument. Basically, this comes down to the question of whether other people would likely need to use the same trademark for the same goods/services. Others would have genuine need to use the word Chocolate for confectionery products, but would not need to use Chocolate as a brand or description of a musical instrument.
A great example here is Apple. If filed in connection with apples (fruit) it would be rejected. However, as we know it has been a successful brand (and is registered as a trademark) for computers and related goods/services.
What about a domain name? Can I trademark that?
Yes, you can register a domain name as a trademark so long as it holds that capability to distinguish the associated goods/services. Adding a domain suffix does not in itself turn a descriptive term into a distinctive term. Following the above examples, Chocolate.com.au for confectionery would still be presented with a report that the term Chocolate is too descriptive. We encourage registration of a full domain name only if you are using (or intending to use) that full domain as your trademark.
You will however be required to show you are also the registrant of that domain name (or authorised by the registrant to be registering a trademark that incorporates a domain name).
What are some examples of words you cant trademark?
Entirely descriptive words will not be registered as a trademarks. e.g. Chocolate for confectionary.
A trademark must also be rejected if because of something arising immediately from the trademark itself would deceive or cause confusion. For example, a famous person’s name or a domain name you do not hold.
Further, trademarks will be rejected if they are deemed scandalous. Scandalous marks are more than simply being not to everybody’s taste. For example, a mark such as “I DON’T GIVE A FLYING F@#%!” might not be to everyone’s taste but are not considered scandalous.
Scandalous marks requiring rejection are more likely to be:
- Marks that incorporate abuse towards a person
- Marks that incorporate abuse towards a particular racial or ethnic group
- Marks incorporating abuse towards a national flag
- Marks incorporating abuse towards a particular religion
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BIO:
Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.
Disclaimer – The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.