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What can you trademark?

A Trademark can be anything that is a source identifier.  For example, a source identifier can be any phrase, word, symbol, device, and sound that distinguishes your goods or services from others.  A list of trademark types that can be protected include the following:

- Words
- Slogans
- Logos
- Smells
- Colors
- Sounds
- Visual appearance of a product or its packaging (Trade Dress)

It is often easier to determine whether a potential mark is eligible for trademark protection based on what CANNOT be trademarked. Trademark laws do not extend to marks that include or involve the following:

- Generic Terms or Phrases
- Likeness of a former or current U.S. President
- Government symbols
- The proper name or likeness of an individual without their consent

 

There are five different categories for determining the distinctiveness of a trademark:

Generic marks are those marks that have become so popular or synonymous with the good and/or service that it is its primary identifier, these marks are not registrable. Basically, a generic mark became a victim of its own popularity and is no longer a source identifier!

Example: Did you know that the word “Yo-Yo” used to be a brand?  Now, the word yo-yo is often associated with the toy, instead of a brand name.

 

Descriptive marks are marks that describe certain aspects of your goods/serviceswithout being their primary identifier.  With enough recognition and exposure in the marketplace, a descriptive mark can become registrable over time.

Example: “Cold and Creamy” would be a descriptive mark for Ice Cream as it describes its qualities and features as ice cream is a delicious, cold and creamy treat!

 

Suggestive marks are those that do not go as far as descriptive marks in describing the goods/services yet hint at their nature. While these marks are typically registrable, the most registrable marks are arbitrary or fanciful marks.

Example: Citibank is a suggestive mark as it indicates some relation to banks and the city!

 

Arbitrary marks are made up of words or symbols whose parts have no associated meaning within the context of the goods/services while fanciful marks are those whose parts are entirely made up!

Example: Apple is an arbitrary mark for computer products, since you normally wouldn’t connect apples with computer products.  Well, at least until Apple came along to be a mainstay in the industry.

Verizon is a fanciful mark that did not exist in the English language before the company began using it!  They made that word up!

Author: Jacob Salit.

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