What Can and Cannot be Trademarked?

What cannot be trademarked

There is often a lot of confusion and misinformation surrounding the topic of what can and what cannot be registered as trademarks.  

Now that your business is growing and your sales are improving tremendously, you believe that it is time to trademark your business name. Many people in the exact same position ask this question: “What can I trademark?”. They wonder about this because they are unsure as to whether it is possible to trademark a color, a common word, a symbol, or even their birth names.

We will provide some answers to this question in the following paragraphs.

What is a trademark?

The word “trademark” is probably a term you are already familiar with. In reality, almost anything can be trademarked but there are a few important things to keep in mind before filing an application at the trademark office in your country.

A trademark is a sign that helps people identify the products or services that a business provides from products or services provided by another business.

What can be trademarked?

Now that we have clarified the meaning of the word “trademark”, let’s move on to the first question in the above paragraphs: “What can I trademark?”.

Trademarks can be anything from a simple word, name or phrase, to more abstract ‘signs’ such as shapes, images, sounds, aspects of packaging, colors, or even scents. 

In several countries such as Australia, India, and the United States of America, it is even possible to register scents as trademarks, although it is highly unusual.

Since wordmarks or logos represent the vast majority of trademark applications, this is what we will essentially focus on.

What cannot be trademarked?

Not all words or logos can be trademarked. In order for a sign to function as a mark and thus qualify for registration, it must serve as an indicator of the source of origin of the relevant goods or services. 

Some criteria for which trademarks are likely to be refused are common to most trademark offices. They are the following:

Prior Identical or Similar Trademarks

First and foremost, if you file a trademark application for a trademark that is identical or very similar to an existing trademark, then you will most likely receive either two things: an objection from the trademark office or an opposition from the owner of the identical or similar trademark.

The factors which must be considered, amongst others, are visual and phonetic similarity (looks like, sounds like), word meanings, translations, and marketplace considerations. This is commonly referred to as “likelihood of confusion”.

However, there is a slight chance you may be able to overcome these refusals or oppositions. When it comes to the examiners, they will take into consideration the following criteria:

1. The nature of the mark;
2. The types of goods or services for which registration is sought.

For example, you decide to try and trademark the name “Belle-art” for beauty products. However, since you did not order a trademark search first, you didn’t know that there is already a registered trademark for the exact same name “Belle-art”. This is where you might receive an objection or opposition.

However, we know that the already registered trademark “Belle-art” is registered for kitchen implements. In this case, you might be able to register your trademark since you sell beauty products that are in a different class from the products which the third party sells (kitchen implements).

In any case, in order to avoid situations like this, which involve additional costs, it is recommended to order a trademark search to understand your chances of success for registration.

Generic Trademarks

One reason why your trademark will most definitely be rejected is if it consists solely of Generic Terms. These are words or symbols that communicate what type of product or service is being offered to the public.

Generally, trademark law does not allow a company to claim a generic term as its trademark. A generic term is a word or phrase that identifies the type of product or service involved: for instance, “Apple” used for fruit or “Clothing” used to identify a clothing product.

Everyone deserves the right to accurately identify the type of goods or services it is offering to the public. If a company was allowed to claim exclusive rights over a generic term, it would be unfair for the competition.

Descriptive Trademarks

Descriptive marks are a type of trademark that contains words that identify the characteristics of a product and are generally considered weak marks. While trademarks can be registered if they contain some descriptive elements, they cannot be registered if they are “merely descriptive”, that is, if they contain ONLY descriptive words.

For example, “FAST CAR” is merely descriptive as "fast" is a quality of cars. Therefore, if someone tries to trademark this, they will definitely receive an objection.
 
If, on the other hand, they try to register the words “TASTY CARS” for selling cars, then this application could be accepted since “tastiness” is not a characteristic usually associated with cars and therefore would be distinctive.
 
Note that if you were trying to register for fruit, the opposite would be true: “FAST FRUITS” would probably not be considered descriptive, but “TASTY FRUITS” would be.

Specific Country Restrictions

In addition to the above requirements which are common to most countries, some of them have specific restrictions. We take a look at some of them below. However, if you plan on registering a trademark in a specific country you should always check its specific requirements.

United Kingdom

In the UK, a trademark will be refused if it includes the image of a crown or images of members of the Royal family, flags and other State emblems, or armorial bearings.

Switzerland

The Swiss federal trademark office prohibits the use of the Swiss emblems of sovereignty, among which the Swiss cross and the cantonal coats-of-arms, in trademarks registered for goods. They may be used for service marks.

Australia

In most countries, last names or surnames can be registered as trademarks under specific conditions. However, in Australia, a trademark that includes a surname will be refused if it is considered common by the trademark office. Surnames will be deemed common for trademark purposes if they appear more than 750 times in the Australian electoral roll. 

Saudi Arabia

Trademarks cannot be registered with goods and services that are forbidden in Saudi Arabia. For example, pork products and alcoholic beverages are banned in this country.

Conclusion

All in all, the most important thing in order for your trademark to be accepted is that it does not infringe on the rights of previous trademark holders and that it allows the identification of the origin of the goods or services it covers.

Since the criteria differ in different countries, before proceeding to file an application in the country of your interest, it is important to look into the trademark law and also to do a trademark search beforehand.

A trademark search will help you know if there are other trademarks similar or identical to your own, and if your trademark complies with criteria like not being generic or merely descriptive. 

If you’d prefer some extra guidance to start your trademark registration process, contact us now!

 

Author: Solange Rámirez, Trademark Consultant @ iGERENT.com

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