What Can I Trademark?

Almost anything.

One of the first questions many people have revolves around the brand name or logo - often the first contact most customers have with a business. The short answer is that your brand name or logo may be protected by trademark law.

Trademark law protects any word, symbol, slogan, or designation (a word that covers just about everything - I'll use this as an umbrella term below) that identifies your company and distinguishes it from other companies. A trademark can be anything -- from the typical name or logo to a sound, motion, or smell. Basically, anything that is distinctive and separates you from the competition.

There are some specific requirements though - you have to use the trademark first in commerce, your trademark cannot be functional, and your trademark must be distinctive. If you meet these requirements, you may want to consider protecting your trademark through registration.

First, you have to be the first to use the designation on a specific category of products or services. If someone beats you to the punch, you may be out of luck.

Second, the designation can't be "functional." If it does something useful, or makes a product/service more aesthetically desirable, it likely isn't protected under trademark law.

Third, a designation has to be distinctive. There are four basic categories here: arbitrary/fanciful, suggestive, descriptive, and generic. The worst kind is generic - if a designation is generic it can't be trademarked. Generic terms are essentially the words that tell us what a thing is -- i.e., you can't trademark the word APPLE to sell an apple.

Descriptive things are only trademarkable if they have something called secondary meaning. Descriptive items identify characteristics or qualities of a product or service -- i.e., QUICK PRINT for printing services or BEEF & BREW for restaurants that sell, you guessed it, red meat and beer.

Secondary meaning basically looks in the minds of your customers - have you done enough marketing, advertising, and selling so that customers now associate the descriptive words with your company? If so, you may be able to protect the designation as your trademark.

Suggestive trademarks suggest, rather than describe, characteristics or qualities of a product or service. With these, you don't have to prove secondary meaning. One example is COPPERTONE for suntan lotion - the trademark suggests that you will get a brown skin tone by using the product.   These types of trademarks are easier to protect than descriptive trademarks because you don't have to prove secondary meaning.

Arbitrary and fanciful trademarks are the strongest. An arbitrary trademark exists when you use a word or symbol that already exists in a completely unrelated context. Using the earlier APPLE example, APPLE for computers/phones is arbitrary. The word already exists, but a company is using it to sell products completely unrelated to the fruit.

Fanciful trademarks are treated similarly, but exist when you use a made-up word or symbol. An example would be KODAK for cameras.

As you can see, this process can be complicated. If you'd like to chat more with us about whether you have a protectable trademark, please click here to send us a message.