First, your mark cannot conflict with any other trademark because of confusing similarity. Second, your mark must be distinctive.  Third, you must use your mark in commerce.  Fourth, your mark must be a source identifier for your products or services. So, getting your Federal trademark comes down to meeting the same four trademark requirements:

     1.  No conflicts with other trademarks

     2.  Trademark distinctiveness

     3.  Use in commerce

     4. The capability to be a source identifier

 

In the world of intellectual property, the question of whether you can trademark a word is a common one. The short answer is yes, as seen above, but there are important nuances and limitations to consider. This blog post will explore the intricacies of trademarking a word, including the different types of trademarks, the concept of secondary meaning, and the role of the United States Patent and Trademark Office (USPTO).

 

Verna Law, P.C. focuses on trademark law – contact us at 914-908-6757 or send an e-mail to anthony@vernalaw.com

What is a Trademark?

A trademark is a form of legal protection that grants the trademark owner the exclusive right to use a specific mark in connection with certain goods or services. This can include words, phrases, symbols, or designs that identify and distinguish the source of the goods or services of one party from those of others. Trademarks can take several forms, including:

• Word Marks: Single words or phrases, such as “Apple” for Apple Inc.
• Design Marks: Logos or stylized designs
• Service Marks: Similar to trademarks, but used to identify services rather than goods

Can Common Words Be Trademarked?

Trademark protection can extend to common words, but with certain restrictions. For a common word to be trademarked, it must not be generic or merely descriptive of the goods or services. For example, the word “apple” is a common word, but Apple Inc. successfully trademarked “Apple Computer” and “Apple” for their brand name and specific products like computers and phones. This is because “apple” in this context associates it with the brand rather than the fruit.

 

The strength of a trademark is pivotal in determining the level of protection it receives and its overall impact in the marketplace. A trademark’s strength is assessed based on its distinctiveness and its ability to identify the source of goods or services. It does not matter if the trademark is a word trademark, a logo trademark, a catch phrase, or a title of a literary work (provided it is a series).

 

Distinctiveness is categorized into five main types:

1. Fanciful Marks: These are inherently distinctive and are created for representation as a trademark or brand (e.g., “Kodak” for cameras).

2. Arbitrary Marks.  These are inherently distinctive and have no connection to the product or service (“Apple” for computers).

3. Suggestive Marks: These imply a characteristic of the product but require consumer imagination (e.g., “Netflix” suggesting internet movies).
4. Descriptive Marks: These directly describe a product’s feature and need secondary meaning for protection (e.g., “Sharp” for televisions).
5. Generic Terms: These are common names for products and are not protectable (e.g., “computer” for a computer).

A registered trademark is crucial for businesses and individuals in the USA for several reasons, providing significant legal and commercial advantages:

 

1. Legal Protection and Exclusive Rights

A registered trademark grants the trademark owner the exclusive right to use the mark in connection with the goods or services listed in the federal trademark registration. This federal protection helps prevent others from using a confusingly similar mark, which can lead to trademark infringement. If infringement occurs, the trademark owner can take legal action to enforce their rights, including seeking damages and injunctions.

2. Nationwide Protection

A registered trademark with the United States Patent and Trademark Office (USPTO) provides protection across the entire United States, regardless of where the trademark is used. This nationwide protection is crucial for businesses operating in multiple states or planning to expand nationally.

 

3. Public Notice

Registration puts the public on notice of the trademark owner’s claim to the mark. This notice helps deter potential infringers who may check the USPTO database before adopting a new mark. It also provides constructive notice, meaning that a trademark owner doesn’t need to prove that an infringer had actual knowledge of the mark.

 

4. Enhanced Remedies in Legal Actions

A registered trademark offers enhanced legal remedies compared to an unregistered mark. In a legal dispute, the trademark owner can:

• Recover statutory damages and potentially higher monetary awards
• Claim attorney’s fees in cases of willful infringement
• Use the registration as evidence of the validity and ownership of the trademark in court

5. Basis for International Registration

A U.S. trademark registration can serve as a basis for obtaining trademark protection in other countries through international treaties, such as the Madrid Protocol. This makes it easier and more cost-effective to secure trademark rights globally.

 

6. Use of the ® Symbol

Once a trademark is registered, the owner can use the ® symbol with their mark, signifying that it is federally registered. This symbol enhances the mark’s credibility and serves as a public deterrent against infringement.

 

7. Value and Asset

A registered trademark is a valuable business asset that can increase the overall value of a company. It can be sold, licensed, or used as collateral in financial transactions. A registered trademark also adds credibility and value to a brand, making it more attractive to investors and partners.

 

8. Protection Against Cybersquatting

Trademark registration provides a basis for action against cybersquatters under the Anti-Cybersquatting Consumer Protection Act (ACPA). It allows the trademark owner to seek remedies if someone registers a domain name in bad faith that is confusingly similar to their trademark.

 

9. Consumer Trust and Brand Recognition

A registered trademark helps build consumer trust and brand recognition. Consumers are more likely to associate registered trademarks with consistent quality and reliable products or services. This trust can lead to increased customer loyalty and a stronger market position.

 

Generic Terms and Descriptive Words

• Generic Terms: These are words that are common names for goods or services and cannot be trademarked. For instance, “computer” cannot be trademarked for a company that sells computers. A generic term and common name can never rise to trademark protection.
• Descriptive Terms: Words that describe a characteristic or quality of the goods or services. These can only be trademarked if they have acquired distinctiveness through extensive use in the market, known as secondary meaning.

The Importance of Secondary Meaning

Secondary meaning occurs when a descriptive word or phrase, through extensive and exclusive use, becomes associated with a particular brand in the minds of consumers. For example, “Windows” is a common word, but it has acquired a secondary meaning as a trademark for Microsoft’s operating system.

 

Trademark Registration Process

The first step in trademarking a word is conducting a thorough trademark search to ensure that the word is not already in use by another entity in a confusingly similar manner. This search can be done through the USPTO database and other resources. It’s advisable to consult a trademark attorney for this process. A confusingly similar trademark cannot be registered when one mark is already

 

After ensuring the word is available, you can file a trademark application with the USPTO. The application process involves submitting a description of the mark, the goods or services it will be associated with, and specimens showing how the mark is used in commerce. Additional fees may apply during this process.

 

Types of Trademarks

• Standard Characters: Plain text without any specific font, style, size, or color
• Special Form Format: Specific stylization or design, including logos

Examples of Trademarks

• Apple Inc.: The word “Apple” for computers and technology
• Google: A made-up word that has become synonymous with the internet search engine

Challenges and Considerations

• Likelihood of Confusion: The USPTO will reject a trademark application if the proposed mark is confusingly similar to an existing trademark.
• Generic and Descriptive Terms: As mentioned, these are challenging to trademark unless they have acquired a secondary meaning.
• Personal Names: Generally, personal names are considered descriptive and require proof of secondary meaning for trademark protection.

Famous trademarks hold a special status in the realm of intellectual property due to their widespread recognition and the substantial goodwill they command. Here are several reasons why famous trademarks are particularly important:

 

1. Enhanced Legal Protection

Famous trademarks receive a broader scope of protection under trademark law. This includes protection against dilution, which occurs when a famous mark’s distinctiveness is weakened through unauthorized use by others, even if there is no direct competition or likelihood of consumer confusion. Dilution can occur through:

• Blurring: When the unique identity of a famous mark is blurred by its association with different products.
• Tarnishment: When a famous mark is used in a context that harms its reputation.

2. Strong Deterrent Against Infringement

The high recognition and reputation of famous trademarks act as a powerful deterrent against potential infringers. Companies and individuals are less likely to use marks that are similar to well-known trademarks due to the increased risk of legal action and significant penalties.

3. Global Recognition and Protection

Famous trademarks often enjoy protection not just in their country of origin but globally. International treaties and agreements, such as the Paris Convention and the Madrid Protocol, provide mechanisms for the protection of well-known marks across multiple jurisdictions, simplifying the process of securing international trademark rights.

4. Consumer Trust and Loyalty

Famous trademarks represent a brand’s reputation, quality, and reliability. Consumers are more likely to trust and remain loyal to brands that have established a strong market presence and are widely recognized. This trust translates into sustained customer loyalty and a competitive edge in the market.

5. Commercial Value and Brand Equity

The commercial value of a famous trademark is immense. Such trademarks are significant assets for a company, contributing to overall brand equity. They enhance the market value of the company, attract investment, and can be leveraged in various business transactions, such as licensing, franchising, and mergers and acquisitions.

6. Market Power and Competitive Advantage

Famous trademarks provide companies with substantial market power and a competitive advantage. They can command premium pricing, secure favorable shelf space, and dominate advertising and promotional activities. The strong market presence of famous trademarks makes it challenging for competitors to encroach on their market share.

7. Influence on Market and Consumer Behavior

Famous trademarks can influence market trends and consumer behavior. Their widespread recognition and cultural significance often set industry standards and shape consumer preferences. This influence extends beyond mere product identification, impacting lifestyle choices and social trends.

8. Legal Precedent and Protection Strategy

Famous trademarks often set legal precedents that shape trademark law and protection strategies. Court rulings involving famous trademarks contribute to the development of legal doctrines and provide valuable guidance for trademark owners in managing and protecting their brand assets.

Examples of Famous Trademarks

• Apple Inc.: Recognized globally for technology products and innovation.
• Coca-Cola: Synonymous with soft drinks and one of the most recognized brands worldwide.
• Nike: Known for sportswear and its iconic “Swoosh” logo. A design mark like this is special because of its fame, not because of its design.
• Google: Dominates the internet search engine market and represents innovation in technology.

 

Conclusion

Trademarking a word is a complex process that requires careful consideration and legal expertise. While it is possible to trademark a word, especially if it is a distinctive or made-up word, common and descriptive words face more significant challenges. Business owners seeking to trademark a word should conduct a thorough trademark search and consider consulting with a trademark attorney to navigate the process successfully.

For further reading and guidance, check out our previous blog posts on the importance of trademark searches and what makes a trademark fanciful:

• Why is a United States Trademark Search Necessary?
• Video Blog: Talking About Trademark Searches
• Can you Trademark a Hashtag?
• Can you Trademark a Quote?
• Is Your Trademark Fanciful?

Trademarking a word can significantly enhance your brand identity and provide robust legal protection against infringement. By understanding the types of trademarks, the concept of secondary meaning, and the registration process, you can take the necessary steps to secure your brand’s future.

 

Verna Law, P.C. focuses on trademark law – contact us at 914-908-6757 or send an e-mail to anthony@vernalaw.com