The Ultimate Guide On What You Can Trademark (the last one is surprising!)
Many people in the real world are misunderstood on what you can trademark. Most people are under the impression that everything can be trademarked. But, the United States Patent and Trademark Office (USPTO) have rules about trademarks they allow. This guide will take you through what the USPTO accepts as a trademark. If you need a refresher on what a trademark is, check out this post.
Now… let’s get strarted on this fascinating topic, shall we?
1. Name and Business Names
So, of course we know that your business name can be trademarked, if you are using the name to sell goods or services. But you can also trademark your name if you are using your name to sell goods or services.
For example, Kylie Minogue and Kylie Jenner battled over the trademark Kylie. Kylie Minogue won that battle because her fans know her by Kylie. Kylie Minogue’s fans have identified her as Kylie before Kylie Jenner was born. Minogue’s lawyers believed that if the USPTO granted Kylie Jenner the trademark, “it would violate and diminish the prior and superior rights” of the singer and likely create “confusion resulting in damage and injury” to her.
A lot of people’s fave artist, Beyonce, is an ongoing battle to trademark her daughter, Blue Ivy’s name. You may think that just because Blue Ivy is somewhat of a celebrity, that’s enough to trademark her name. WRONG! Beyonce registered Blue Ivy’s name under a trademark class to sell baby goods. A trademark class is a category that you sell your goods or services under. In 2017, an event planning company named Blue Ivy opposed the name and there has not been a resolution yet.
The takeaway from this is that you have to be selling goods or services, if you are going to try to trademark your name. Also, the USPTO will not allow you to trademark only your last name to preserve it, generally. If the last name acquires a secondary meaning through use, the USPTO may allow you to trademark the name.
Does “Just Do It” sound familiar to anyone? Yes, you can trademark your slogan. But it must correspond to a good or service that you are selling (shocking, i know!) So if you use your slogan for an advertising campaign or on your products, then it is trademarkable (maybe a word? Idk). But sometimes your slogan has to acquire a secondary meaning. That means that when someone sees or says your slogan, that your product or service comes to mind. This is likely how Nike’s slogan became a trademark.
3. Domain name
Ah, domain names. I don’t know if you guys realize it, but the law drags its feet when it comes to catching up with technology. Hello… Reno, Nevada still outlawed sex toys until 2009. Nevada of all places *rolls eyes*. Anyway back to domain names. A domain name can be trademarked if it is used in connection with a website to sell goods or a service. A good example of a domain that has been trademarked is godaddy.com. I want to discuss some important aspects of domain names and trademarks to keep you outta trouble.
NUMBER ONE: Just because you have a domain name, does not mean you have a trademark.
NUMBER TWO: Buying a domain name without doing your research, may result in trademark infringement. if that name is a registered trademark.
So make sure you do your research before choosing a domain name because you may lose it. All that marketing and all that traffic you’ve drummed up could vanish in a snap. You’ve worked too hard for that! So take a little bit of time in the beginning to dig and snoop around when choosing a domain name. Pretend it’s like you’re checking up on someone who you don’t care about…but maybe care about a little…you know… just to see what they’re up to it.
Ah… the logo. The thing you’ve spent $500 on to create and what everyone thinks of when they think of a trademark. Your logo becomes a trademark when you use it to sell goods or services. But just having it on a shirt or mug does not make it a trademark. The logo needs to be on your packaging, if you sell goods. If you are a service based business, the logo on your advertisement or webpage is enough.
Some familiar logos, you may wonder? The golden arches (Mcdonald’s), the red bullseye (Target), and the swoosh (Nike).
4 words…the little blue box. What comes to mind? Good ol’ Tiffany & Co. The USPTO will register colors as long as the colors area a recognizable component to your brand. Colors usually need to acquire secondary meaning to be registered with the USPTO. That means that over time people associate the color with your brand. If you try to register red, and you’ve only been in business for 6 months, the USPTO will likely deny it. But over time, you will have a better chance of registering that red color. And no, I don’t have an exact time because it’s under the USPTO’s discretion.
I am one of those people that loves to know random facts. So much so, that my husband calls me a person who knows stupid knowledge. Whether you know it or not, Coca Cola has trademarked their packaging. The USPTO will register packaging if its distinctive or has gained secondary meaning. Product packaging must also be nonfunctional to be protectable. This means that your packaging doesn’t serve a particular purpose. The packaging must be something that sets your goods apart, such as a skull shaped vodka bottle. The skull shape doesn’t serve a particular purpose. But, it is distinctive from other vodka bottles and how a consumer recognizes the brand.
Did you know that some of the sounds that you hear everyday are trademarked? This includes the NBC chimes, the MGM lions roaring, and the Mr. Softee ice cream truck song. How many of you guys remember the ice cream trucks in your neighborhood? It’s what childhood dreams are made of *sniff sniff*. The chimes, the lions, and the jingle of the ice cream truck are all sounds that function on how you recognize these brands. Remember, any old sound can’t be trademarked. The sound has to serve as a way for consumers to identify your brand.
Remember what I said in #3, about how the law is late to catch up on technology? Well, they may have redeemed themselves by including hashtags into the trademark world. The USPTO states that, “A mark comprising of or including the hash symbol (#) or the term ‘hashtag’ is registerable as a trademark of service only if it functions as an identifier of the source of the applicant’s goods or services.” Back in 2016, the number of hashtag trademark applications had increased 64% in one year. That was 3 years ago, so I can only imagine that the number has increased. Many companies use their hashtags to find influencers and to engage with consumers. So it only makes sense that they would want to trademark their unique hashtag. Remember, if you want to trademark a hashtag, it still has to be distinctive and will not cause confusion among consumers.
P.S. Sticking a hashtag in front of a name, does not remove the likelihood of confusion element.
I hope this has helped you out while you are on your trademarking journey. Trademarking is neverending because as time changes, so does the law. If you need help getting started on this journey, schedule a consultation.