Your business is growing and the quality of your products or services has already given your venture an edge over the competition. However, beyond continuing to do what you've been doing, that is, successfully growing your business, how do you maintain and bolster the integrity of your brand? More importantly, how do you increase brand awareness while solidifying your brand's place in any given market?
If you've considered registering a trademark, you're on the right track. However, do you know exactly what can be trademarked?
In this article, we'll examine what a trademark is, what can be trademarked, and what can't be trademarked.
What Is a Trademark?
You've seen them. They're everywhere... lurking on store shelves, in print, elements of design, and so much more. In fact, a trademark can be just about anything. But before you run off to the trademark office, let's clarify that statement.
A trademark is any trait or feature which identifies your products or services in a manner which uniquely distinguishes them from a competitor's offering. In other words, a trademark is what your customers will come to associate with your business. This, in spite of the fact that other businesses offer identical or similar products and services.
A trademark is anything which can be uniquely associated with your brand and what it does. On that note, a trademark does not protect your business itself, or the products or services which it offers. Trademarks are designed to help your products stand out in a competitive world.
A trademark is potentially an invaluable asset for your business. Whatever it may be, it provides your target customers with information about what you do, and how you do it better than the competition.
What Can Be Trademarked?
As mentioned previously, a trademark can be just about anything. More specifically, a trademark can be:
- Product or service names
Any of the elements listed above (and even smells in some countries!) can be registered as a trademark. In most countries, as long as it can be represented graphically (whether by letters, a drawing, a musical partition, a chemical formula…) it can be trademarked.
Here is a short checklist of restriction requirements (henceforth known as “trademark naming no-no’s”) that one must adhere to when contemplating the creation of a brand name.
It is important that a trademark:
- Does not use geographical terms.
- Does not use an individual’s name (unless authorized).
- Does not describe its products or services.
- Does not use a generic term for a product or service.
- Does not falsely imply a characteristic or deceive the public.
- Has not already been filed or registered in the country of interest for similar or the same products or services.
Let’s look at some examples regarding products and services names, logos, and taglines using as examples some well-known brands: NIKE, McDonald’s, Verizon, and Disneyland.
Product and service names
NIKE (products and services)
The NIKE trademark is known world-wide for their sporting goods and clothing lines. The vast majority of the known world is familiar with the name NIKE, regardless of how they pronounce it. Their name is displayed on their products from New York to Timbuktu. But where does this ubiquitous name come from? And is it registrable as a trademark?
The word NIKE comes from the name of the Greek winged goddess of victory (the story of how this name was chosen is worth a read), but how does it match up with our list of six trademark naming no-no’s? Let’s take a closer look:
- Is the word NIKE a geographical term? – No.
- Is the word NIKE an individual’s name? – No (luckily, Greek goddesses don’t count).
- Does the word NIKE describe what they sell or offer? – No.
- Is the word NIKE a generic term for what they offer? – No.
- Does the word NIKE cause the public to think they are selling something other than what they offer? – No.
- Was the word NIKE already filed or registered? – No (this may vary country to country).
As you can see from our handy checklist, the word NIKE as a trademark checks all the correct boxes and is therefore registerable. This is our first example of a word that has been trademarked to protect products and services.
We won’t bore you with a detailed checklist for our other trademark examples, but let’s review the brands themselves.
McDonald's (products and services)
Easily as famous as NIKE, McDonald’s has been offering cheap hamburgers the world over for decades. You may be asking yourself how the word “McDonald’s” was registered, as it so closely resembles a common surname. The founder of McDonald’s actually bought the rights to the name and the service from the McDonald brothers who had their own burger and fries quick-service stream-lined restaurant. The name McDonald’s also passes the other trademark naming no-no’s on the checklist.
Verizon (products and services)
This company pulls their name from the word “veritas” (Latin for "truth") and the word “horizon”. Creative, right? They provide communications, information and entertainment products and services to consumers worldwide. From mobile phone service to cable television and anything in between and beyond, Verizon does just about everything within their industry. This name also passes our trademark naming no-no’s checklist.
Disneyland (products and services)
A place of wonder and fantasy, visited by around 18 million people per year in Anaheim, California alone – this doesn’t even include Disneyworld or the various other international locations. Few people in this world don’t know what Disneyland has to offer, but they are service heavy in the area of theme parks, but also have products of all shapes, colors and sizes with their trademark of Disney stamped on each and every one.
Walt Disney did use his own name as part of this iconic trademark, which does not violate any of our trademark naming no-no’s, as he assuredly gave himself permission to use his own name.
So that covers our examples of words that can be trademarked for products and services. Maybe you’re wondering if your idea of a brand name can be registered. Well, first run through our trademark naming no-no’s to see if your desired name passes the test, and when you are ready to commit, you can order a Trademark Search in your country or countries of interest. The professionals at iGERENT will give you a more in-depth look at the probabilities of your trademark registering successfully.
A trademark can include not just words, but also images or artistic elements. Logos can be registered by themselves, or in conjunction with their wordmark counterparts. Let’s use our previous four companies and review their logos to give you an idea of what can be trademarked in the realm of logos.
The NIKE “swoosh” is possibly one of the best-known logos on our planet. It is used on a vast number of their products, closely situated next to the name NIKE – or not. It has become so famous that it can stand alone and still be recognized as NIKE. As you can see, it is simple, yet elegant. It isn’t necessary for a logo to be complex just to differentiate itself from the competition.
But one thing a logo needs is to be unique. NIKE picked the swoosh and ran with it (pun intended), and now its theirs and theirs alone.
The famous golden arches. The McDonald’s logo is easily in the running of one of the most well-known logos in the world. Just like NIKE, it is also simple, but says so, so much in the way of burgers and fries. It is also used alongside their wordmark name McDonald’s, but can be used separately as well!
McDonald’s has their logo registered with and without color, protecting the shape of their logo in gold (color claim) or any other color they deem fit (no color claim). This is an important thing to consider when registering your logo. Do you want to be able to use your logo in any color? Then don’t claim color in your trademark application. Do you want to protect your logo and its color and have no plans to change the color in the future? Then claiming color in your application would be wise. For more information on claiming color your logo, check out this blog article.
Sometimes, like with Verizon, part of the word is made into an artistic visual representation. The “Z” in Verizon’s logo would be considered “stylized” by a trademarks office.
Some logos include words in the image, as is the case with Verizon, as well as Disneyland in our example below. Registering a combined trademark (logo + wordmark) is actually the more common choice of companies, as it allows you to display not only your name, but also the visual representation of your logo. It can also be more cost effective to register your logo and wordmark together (depending on the country).
Disney has a vast multitude of different logos in use and registered. A common one is the word “Disneyland” in a stylized font below a drawing of the famous Disney castle.
It would be rather easy to separate the castle from the word Disneyland, but if it were you, would you prefer to register these two elements separately or together as a combined trademark? Sometimes it comes down to preference, other times to cost, and even protection.
Slogans and Taglines
This is just our first example of taglines that can be trademarked. Do you have your own tagline that deserves to be registered as a trademark? Feel free to let us know what your slogan/tagline plans are in the comments at the bottom of this article.
“JUST DO IT”. Not only is this pretty good life advice, but it’s also registered as a trademark. It may not be their primary trademark (which is obviously NIKE), but this world-renowned tagline has been trademarked, just like many taglines before and after it.
“I’M LOVIN’ IT”. Whether or not this is your experience after downing a McDonald’s happy meal, it is a tagline that has been translated into countless languages and has been registered as a trademark just as many times.
“CAN YOU HEAR ME NOW? GOOD”. Even a question can be registered as a trademark! In this case, Verizon’s incredibly effective ad campaign which put them on the map in the world of telecommunications used this tagline multiple times in every commercial. Sometimes more is better.
“THE HAPPIEST PLACE ON EARTH/WHERE DREAMS COME TRUE”. In the case of Disneyland, they have migrated various times from one tagline to another. Their longest running tagline (The happiest place on earth) truly withstood the test of time, but Disney seemed to think it was time for a change. Enter, “Where dreams come true”. Both of these taglines are not only registered as trademarks, but they are both currently live and well. When it is time for you to evolve your tagline, remember to file the new one for registration and keep your protection up to date.
That wraps up our discussion of what can be trademarked in regard to products and services, logos, and slogans and taglines. Let’s take a quick look at the next three; sounds, shapes, and colors.
Do you like to play with sound effects, jingles and ditties? Maybe what your brand needs to differentiate itself in the market.
Maybe you should trademark it, but beware, if the sound is not immediately recognizable by the public and if it is not incredibly distinct and unique, troubled waters may lay ahead.
Most sounds, especially longer ones that become song-like in nature, should be copyrighted. Take a look at this page as to why you may need a copyright. However, some are and should be trademarked. Let’s see a couple examples.
The MGM lion that roars at the beginning of hundreds of movies. That’s right, the roar is trademarked.
D’OH! Yells Homer Simpson. That sound is, yes you guessed it, a registered trademark. You all know how it sounds, but here you go anyway.
Do you remember Tarzan’s yell? Well that has also been protected as a trademark! It’s a little ear splitting, but take a gander.
As you can see, there are lots of options when it comes to trademarking a sound, but keep in mind the process is a bit more complicated than a straightforward wordmark, so approach the decision to register a sound with care.
Just like with sounds, in order for a shape to be trademarked, it must be very distinct in nature and recognizable by the public. Here are a few shapes that are known far and wide.
- The contour of the Coca-Cola bottle is probably the most famous of trademarked shapes.
- Toblerone’s chocolate with its unique triangle box and bite-sized sections has also managed to trademark its shape.
- Hershey’s Kisses has done the same! The way it tapers off at the top is recognizable enough to also be registered.
Keep in mind that successfully registering a shape is not for the faint of heart. Big companies with unique ideas that started long ago have accomplished this task, but it can be a long and grueling process.
Yes, colors can be trademarked. But is that fair?! Well, that is not up to us to decide. This article is very enlightening regarding trademarking colors. They state that “singular colors and color combinations can be trademarked as part of a product, package or service, if, like any other trademark, they (1) serve a source identification function, and (2) do not serve a merely decorative or utilitarian purpose”.
Trademarking a color is not an easy feat, and in most cases, your trademark must already be famous to accomplish this.
What Can't Be Trademarked?
While almost anything can be trademarked, there are certain limitations.
For starters, you can't register a trademark which already exists. A mark must be unique to your business.
Furthermore, trademarks which are generic (i.e. the term "Hot Dogs" for your bratwurst company) aren't allowed; neither are descriptive terms which convey important features of your product (i.e. your beer company can't trademark the term "Microbrew"). Simply put, your trademark can't have any function (literally) other than differentiating your business from other businesses which provide similar or identical products or services.
Trademarks also can't be misleading, deceptive, or immoral in nature. Lastly, in most countries, they can't use the name of someone living, unless they offer consent.
Now that you know more about what can be trademarked, consider taking the next step to begin the registration process.
For more information about how to proceed with securing your trademark, contact us today!
Author: Eric Lindemann Trademark Consultant @ iGERENT