TM Basics: What Can I Trademark?
Hands down the number one question my clients ask me is: what exactly can be trademarked?
Spoiler alert - more than you might think! Let’s talk about it.
COMPANY NAMES
Most of my clients know that a company's name can be trademarked. But, many mistakenly think that trademark protection is only for large companies. In reality, obtaining a trademark registration for a company name is vital for small businesses that may not have the capital to fight an infringement action or re-brand.
Your company's name is more than just a label or catchy play on words. It is a unique identifier in the marketplace and vital to your company's brand recognition.
A company name must meet the following 3 requirements to qualify for trademark protection:
Distinctiveness. A company name must be distinctive, meaning that consumers can easily differentiate the company, by its name alone, from other businesses in the same or related industries. Unique and memorable names are more likely to meet the distinctiveness requirement.
Non-generic. Company names that are generic or merely descriptive of the products or services offered cannot be trademarked. For example, the name "Lux Nails" for a nail salon merely describes the services provided and does not qualify for trademark protection.
Not confusingly similar. A company name that is too similar to an existing name in the same or similar industry will likely be rejected for trademark protection. The primary goal of the US Patent and Trademark Office is to prevent consumers from mistaking one company for another, based on the company name alone, in the marketplace.
Some well-known and distinctive company names that are trademarked include Apple Inc., Google LLC, Amazon.com, Inc., and Bose.
Let’s talk about Apple for a minute - and specifically about the strength of the name "Apple" as a trademark. The name "Apple" is distinctive and unrelated to the technology industry. "Apple" doesn't describe the products or services the company offers. As a result, the name "Apple" makes the company stand out in a crowded tech marketplace. Also, the name is not generic because "Apple" is not commonly associated with the technology sector. As to future brand expansion, the name "Apple" is super smart and strategic. The name "Apple" is versatile - it doesn’t limit the company to a specific product or service. This flexibility allows Apple to expand its products/services without the risk of the name becoming obsolete. Finally, the name "Apple" is simple and memorable, which facilitates brand recall and recognition.
LOGOS AND SYMBOLS
I like to describe logos and symbols as the visual ambassadors of your brand. A good logo/symbol can instantly convey your brand's fundamental character or essence to consumers and set your products/services apart from competitors.
The requirements for trademarking logos and symbols are similar to those for company names:
Distinctiveness. Your logo/symbol must be distinctive and set your brand apart. Originality and uniqueness are vital for trademark registration of logos.
Non-generic. Logos or symbols that are too generic or common in an industry are unlikely to obtain trademark registration. (Think lightbulb logo for electrician services.)
Non-descriptive. Like company names, logos should not primarily describe the products or services offered. The logo or symbol must do more than illustrate the nature of the business.
Examples of trademarked logos and symbols include:
Nike swoosh. On its face, the Nike swoosh is a simple checkmark. But it's so much more than just a checkmark! It is a globally recognized trademark. The swoosh symbol visually represents Nike's brand identity of commitment to athleticism and innovation. It's brilliant.
Apple logo. The sleek and minimalist design of the bitten apple logo of Apple Inc. is a visual representation of the essence of the Apple brand: simplicity, elegance, and cutting-edge technology.
Mercedes Benz three-pointed star. The three-pointed star logo of Mercedes-Benz is unique and sets Mercedes-Benz apart from its competitors. The logo has become synonymous with luxury and quality in the auto industry.
You don't have to be a Nike or Apple to trademark your unique logo/symbol. Your brand's unique (and valuable) identifiers deserve the same level of protection.
PRODUCT NAMES
Individual product names/product lines can and should be trademarked. Like your company/brand name, the unique names you create for your products/product lines are essential elements of your brand's identity in the market. Product names are more than labels; they are distinctive brand identifiers.
The requirements for trademarking a company name apply to product names: distinctiveness, non-generic and non-descriptive, and not confusingly similar. Unique and memorable product names/lines are more likely to meet the requirements for federal trademark registration (and are more likely to set your brand apart from your competitors).
Some well-known trademarked product names are:
Coca-Cola. The product name "Coca-Cola" is a globally recognized trademark for a soft drink. The name is distinctive, non-generic, and strongly associated with the brand's identity, making it a powerful and protected product name.
3M's "Post-It". Another product name powerhouse. The name "Post-It" is iconic and forever associated with sticky-note greatness.
Sony's "PlayStation". Sony's gaming console, "PlayStation," is a trademarked product name. It is distinctive within the gaming industry and is a powerful brand identifier for Sony's entire line of gaming products.
Kimberly-Clark's "Kleenex". Kimberly-Clark wisely trademarked the name "Kleenex" for its facial tissue product, and the rest is history. What could be more common than tissues? Yet "Kleenex" is distinctive and a powerful source identifier.
Tesla's "Model S". Tesla's electric car model, "Model S," is distinctive within the auto industry. Tesla wisely trademarked the unique product name.
Trademarking distinctive product names is a strategic move for companies seeking to protect and grow their brand identity and market presence.
TAGLINES AND SLOGANS
Taglines and slogans are powerful tools for establishing your unique brand identity and connecting with consumers. To qualify for trademark protection, a tagline or slogan must be distinctive, capable of creating a lasting impression on consumers, and be specifically associated with the brand/product/service. Taglines or slogans that merely describe the products or services offered are not trademarkable. Further, a tagline/slogan that is generic (common) to an industry will not qualify for trademark protection. The tagline or slogan must have a unique and identifiable quality unmistakably tied to a specific brand/product/service.
Examples of some well-known trademarked taglines and slogans are:
Nike's "Just Do It" tagline. Nike's "Just Do It" arguably is one of the most iconic taglines in the world. The phrase perfectly captures Nike's brand identity of empowerment and action, and consumers instantly recognize it as belonging to Nike.
Disney's "The Happiest Place on Earth" tagline. Right next to Nike in icon status is Disney's tagline, "The Happiest Place on Earth." The simple tagline encapsulates the magic and joy of Disney theme parks and creates a strong emotional connection with consumers. It is instantly recognizable and unmistakably tied to the Disney brand.
Burger King's "Have it Your Way" slogan. Burger King's "Have It Your Way" slogan emphasizes customization and personalization of fast food. It is an ingenious example of a slogan created and used to set a brand apart in a competitive industry: fast food.
UNIQUE SOUNDS AND JINGLES
Yes, you can even trademark sounds. If you have a distinctive jingle or sound that uniquely identifies your brand in the marketplace, you should claim it. Like brand names, slogans, and other visual trademarks, sounds or jingles must be distinctive and readily identify a specific brand/product/service to consumers. Also, like visual trademarks, the sound or jingle must not serve a primarily functional purpose. Lastly, the sound or jingle must not be generic or commonly associated with a particular industry.
Some recognizable trademarked sounds and jingles include:
The Intel jingle. The iconic five-note sound that plays when intel devices turn on is trademarked. Consumers instantly associate the unique melody with Intel's processors.
The NBC chime. The three-note chime sequence associated with the NBC TV network is one of the oldest trademarked sounds and is synonymous with all things NBC. (Tell me you don't hear it in your head right now.)
McDonald's "I'm Lovin It" jingle. The distinct (and catchy) "I'm Lovin It" jingle used by McDonald's in various ad campaigns is a critical feature of its brand identity and a protected trademark.
MGM lion's roar. The powerful and distinctive roaring lion sound heard at the beginning of MGM movies is instantly associated with the MGM brand. It is also a protected trademark.
TRADE DRESS
In the trademark world, trade dress means the distinctive visual appearance and overall image of a product or service that sets it apart from competitors in the market. Protectable trade dress features include:
Product packaging or labeling
The specific design of a product
Colors or color combinations
The scent or flavor of a product
Store layout or design
Trade dress must meet 2 primary requirements to qualify for trademark protection:
Distinctiveness. Trademarkable trade dress must be inherently distinctive (in other words, unique) or have acquired secondary meaning. Secondary meaning means that consumers associate your trade dress's specific look and feel (e.g., product packaging, scent, color combination) with a particular source - i.e., your company/brand.
Non-functional. Trade dress that is primarily functional cannot be trademarked. Instead, the trade dress must serve an aesthetic or identifying purpose. For example, the color brown that UPS uses for its uniforms and trucks is a trade dress that primarily identifies the source of the delivery service (and is trademarked). When consumers see a brown UPS truck/uniform, they immediately associate the specific brown color with UPS service.
Check out these specific examples of protected trade dress:
Coca-Cola bottle shape. The iconic contour shape of Coca-Cola's glass bottle is a famous example of protected trade dress. The distinctive silhouette helps consumers instantly recognize the brand.
Tiffany blue box. The distinctive shade of blue used for Tiffany & Co.'s jewelry boxes is trademarked. The color is synonymous with the Tiffany brand and substantially contributes to its brand identity.
Christian Louboutin red soles. The unique red color of the soles of Christian Louboutin shoes is a protected trade dress. When consumers see shoes with a bright red sole, they instantly know the source of the product.
Apple retail store layout. Yep, you can trademark your storefront's unique look, feel, and layout. Apple did. Apple's retail store layout, characterized by sleek design and a minimalist aesthetic, is protected trade dress. The USPTO agreed that Apple retail stores' overall look and feel create a distinctive consumer shopping experience.
Play-Doh scent. That distinctive smell when you open a tub of Play-Doh? Yep, trademarked! The scent is unique to Play-Doh and is an immediate and powerful source identifier. Well played, Hasbro.
Trademarking trade dress is a valuable strategy for companies looking to protect the unique visual aspects that set them apart in the marketplace. If your product packaging, storefront, or website has a distinctive vibe that consumers instantly associate with your products/ service/company/brand, protect it! The big shots protect their unique intellectual property. You can, too.
PODCAST, YOUTUBE CHANNEL, WEBINAR + PLATFORMS, + BLOG NAMES
In today's digital, social media, and content-focused world, you better believe creators are trademarking their unique names for podcasts, blogs, YouTube channels, and webinars/platforms. The same requirements for trademarking company names apply to podcast, blog, YouTube channel, and webinar names: distinctiveness, non-generic, and not confusingly similar. In the increasingly crowded digital space, trademarks are critical protection for your unique personal brand identifiers.