What You Can Trademark: A Beginner's Guide

Post written by

Raad Ahmed

Raad Ahmed is the Founder of LawTrades—a platform that connects businesses to world-class attorneys and a smart project management system.

When Americans see swooping white lettering against a red backdrop on a can, they do not need to look closely to know that the can contains Coca-Cola. A logo featuring five interlocking rings in distinct colors is easily recognizable as the symbol of the Olympic games. If competing soft drink companies and competition organizations were allowed to use the same symbols, wording, fonts, color schemes, graphics, logos and names as Coca-Cola and the International Olympic Committee, these branding tools may not have become synonymous with their respective companies and the products and services they provide.

It's due in large part to trademark law that Americans can view a single logo, hear a word or phrase, process an image or interact with branding material and instantaneously connect whatever is being advertised with the corporation that has registered a trademark for any given specific branding tool.

Government-issued trademark protections help safeguard the intellectual property rights of companies seeking to distinguish themselves from their competitors and their products from those produced/provided by their competitors. Trademarks help customers differentiate between companies and products available to them within the broader marketplace. They also help to distinguish companies and products within any given industry.

As the founder of a legal hiring platform, I've seen how important it is for companies to seek formal trademark protections for any influential branding logos, wording, graphics and other eligible advertising tools they intend to use frequently or in significant ways. Failure to secure proper trademark protection can leave branding vulnerable to infringement and can leave your company vulnerable to liability in the event that a competitor seeks to register a trademark and insists that the original creator is actually infringing upon that company’s intellectual property rights. 

Trademark Eligibility And Types Of Trademarks

Any word, phrase, symbol, logo, graphic or another relatively contained advertising device that brands your company and its goods in such a way that it clearly distinguishes your company, its goods and/or its services in the marketplace may be trademarked. Generally, traditional advertising slogans, logos and the like may be trademarked, provided that the device in question does not infringe upon an existing trademark. 

The owner of a trademark does have the legal authority to grant other companies permission to use that mark in an effort to co-brand. However, this permission must be explicit and legally enforceable. A company may also choose to obtain a collective mark in order to allow multiple members of a connected “group” to benefit from a single trademark. Service marks may be obtained to specifically indicate a branded service and certification marks govern a broad characteristic of a product. For example, if a product meets certain standards, it can be branded with the “organic” certification mark.

Trademark Registration Limitations

Trademarks are usually only protected to a certain extent for approximately 10 years. In addition, a company may be required by the United States Patent and Trademark Office (USPTO) to confirm that the trademark is still in active commercial use halfway into this 10-year timeframe. This timing restriction generally allows different words, graphics, etc. to be used publicly again after the trademark protection has lapsed.

Registering a trademark will not necessarily grant your company exclusive access to a certain word, logo, symbol or another branding device. In certain situations, a company or product in a non-related industry may be able to obtain an exception to exclusive trademark use. This is why Delta Airlines and Delta Faucet may coexist. Although the USPTO usually grants relatively exclusive trademarks, each of these company names is protected despite the fact that they are both “Delta.”

The USPTO sometimes allows companies, goods and services to have similar trademarks if each meets the standard that customers will be able to distinguish them from competitors in the marketplace. Both Delta Airlines and Delta Faucet are successful within their own industries. But because their goods/services are so different and their industries are distinct from each other, there is little risk that customers will not be able to tell these companies apart when seeking to buy an airplane ticket or purchase a new faucet.

When a company is granted a trademark, that company then controls the interest in that specific branding tool and its association between the branding device and the company’s goods and services. It's partially for this reason that generic, deceptive, overly descriptive or geographically specific devices are hardest to brand. Even when a company tries to make certain generic or universal symbols distinct, if they are not distinct enough to properly distinguish a company, goods or services within the marketplace, these trademark requests are likely to be rejected. 

It is not permissible for the USPTO to trademark branding devices that are overtly vulgar or disparaging. Overtly “immoral” and “scandalous” branding devices are also barred from trademark protection. Proper names and likenesses are barred from trademark protections unless the person in question has granted consent.

Finally, before you commit to any specific branding device, carefully consider whether it's likely to remain distinct over time and with significant usage. A trademark’s value is only a strong as its presence in the marketplace. If a trademark is used too often, it can become synonymous with its product and is no longer terribly useful in terms of brand distinction. For example, Kleenex is a product of the Kimberly-Clark Corporation. But the company’s trademarked name for its tissue product became so ubiquitous that it is now used to describe all facial tissue. 

Trademark Registration Next Steps

If your company would like to secure trademark protections for an eligible branding device, consider connecting with an experienced intellectual property attorney as soon as possible. The longer you wait to begin the trademark registration process, the longer your company and branding device will remain legally vulnerable. It is not unheard of for a successful trademark registration process to take up to a year, so enlisting the assistance of an attorney will help to ensure that your trademark registration application is completed and processed as efficiently and effectively as possible.

The information provided here is not legal advice and does not purport to be a substitute for advice of counsel on any specific matter. For legal advice, you should consult with an attorney concerning your specific situation.

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When Americans see swooping white lettering against a red backdrop on a can, they do not need to look closely to know that the can contains Coca-Cola. A logo featuring five interlocking rings in distinct colors is easily recognizable as the symbol of the Olympic games. If competing soft drink companies and competition organizations were allowed to use the same symbols, wording, fonts, color schemes, graphics, logos and names as Coca-Cola and the International Olympic Committee, these branding tools may not have become synonymous with their respective companies and the products and services they provide.

It's due in large part to trademark law that Americans can view a single logo, hear a word or phrase, process an image or interact with branding material and instantaneously connect whatever is being advertised with the corporation that has registered a trademark for any given specific branding tool.

Government-issued trademark protections help safeguard the intellectual property rights of companies seeking to distinguish themselves from their competitors and their products from those produced/provided by their competitors. Trademarks help customers differentiate between companies and products available to them within the broader marketplace. They also help to distinguish companies and products within any given industry.

As the founder of a legal hiring platform, I've seen how important it is for companies to seek formal trademark protections for any influential branding logos, wording, graphics and other eligible advertising tools they intend to use frequently or in significant ways. Failure to secure proper trademark protection can leave branding vulnerable to infringement and can leave your company vulnerable to liability in the event that a competitor seeks to register a trademark and insists that the original creator is actually infringing upon that company’s intellectual property rights. 

Trademark Eligibility And Types Of Trademarks

Any word, phrase, symbol, logo, graphic or another relatively contained advertising device that brands your company and its goods in such a way that it clearly distinguishes your company, its goods and/or its services in the marketplace may be trademarked. Generally, traditional advertising slogans, logos and the like may be trademarked, provided that the device in question does not infringe upon an existing trademark. 

The owner of a trademark does have the legal authority to grant other companies permission to use that mark in an effort to co-brand. However, this permission must be explicit and legally enforceable. A company may also choose to obtain a collective mark in order to allow multiple members of a connected “group” to benefit from a single trademark. Service marks may be obtained to specifically indicate a branded service and certification marks govern a broad characteristic of a product. For example, if a product meets certain standards, it can be branded with the “organic” certification mark.

Trademark Registration Limitations

Trademarks are usually only protected to a certain extent for approximately 10 years. In addition, a company may be required by the United States Patent and Trademark Office (USPTO) to confirm that the trademark is still in active commercial use halfway into this 10-year timeframe. This timing restriction generally allows different words, graphics, etc. to be used publicly again after the trademark protection has lapsed.

Registering a trademark will not necessarily grant your company exclusive access to a certain word, logo, symbol or another branding device. In certain situations, a company or product in a non-related industry may be able to obtain an exception to exclusive trademark use. This is why Delta Airlines and Delta Faucet may coexist. Although the USPTO usually grants relatively exclusive trademarks, each of these company names is protected despite the fact that they are both “Delta.”

The USPTO sometimes allows companies, goods and services to have similar trademarks if each meets the standard that customers will be able to distinguish them from competitors in the marketplace. Both Delta Airlines and Delta Faucet are successful within their own industries. But because their goods/services are so different and their industries are distinct from each other, there is little risk that customers will not be able to tell these companies apart when seeking to buy an airplane ticket or purchase a new faucet.

When a company is granted a trademark, that company then controls the interest in that specific branding tool and its association between the branding device and the company’s goods and services. It's partially for this reason that generic, deceptive, overly descriptive or geographically specific devices are hardest to brand. Even when a company tries to make certain generic or universal symbols distinct, if they are not distinct enough to properly distinguish a company, goods or services within the marketplace, these trademark requests are likely to be rejected. 

It is not permissible for the USPTO to trademark branding devices that are overtly vulgar or disparaging. Overtly “immoral” and “scandalous” branding devices are also barred from trademark protection. Proper names and likenesses are barred from trademark protections unless the person in question has granted consent.

Finally, before you commit to any specific branding device, carefully consider whether it's likely to remain distinct over time and with significant usage. A trademark’s value is only a strong as its presence in the marketplace. If a trademark is used too often, it can become synonymous with its product and is no longer terribly useful in terms of brand distinction. For example, Kleenex is a product of the Kimberly-Clark Corporation. But the company’s trademarked name for its tissue product became so ubiquitous that it is now used to describe all facial tissue. 

Trademark Registration Next Steps

If your company would like to secure trademark protections for an eligible branding device, consider connecting with an experienced intellectual property attorney as soon as possible. The longer you wait to begin the trademark registration process, the longer your company and branding device will remain legally vulnerable. It is not unheard of for a successful trademark registration process to take up to a year, so enlisting the assistance of an attorney will help to ensure that your trademark registration application is completed and processed as efficiently and effectively as possible.

The information provided here is not legal advice and does not purport to be a substitute for advice of counsel on any specific matter. For legal advice, you should consult with an attorney concerning your specific situation.

Young Entrepreneur Council (YEC) is an invitation-only, fee-based organization comprised of the world's most successful entrepreneurs 45 and younger. YEC members repre...">Young Entrepreneur Council (YEC) is an invitation-only, fee-based organization comprised of the world's most successful entrepreneurs 45 and younger. YEC members repre...