Brand Identity Trademarking 101 – Part 2: What Can and Cannot Be Trademarked

In Part 1 of the Brand Identity Trademarking 101 series, you learned what a trademark is and why it’s important to your business. Now, it’s time to learn about what you can and cannot trademark, so you can start brainstorming and researching ideas to develop brand identity elements that you are able to legally protect.

brand identity trademarkingAs mentioned in Part 1 of this series, you can trademark your brand name, brand logo symbol (such as the AT&T globe or the Nike swoosh), or brand slogan. Some companies have successfully trademarked original colors such as Tiffany Blue.

When it comes to trademarking, the name, symbol, slogan, or other brand identity element that you want to protect has to be original, distinctive, and unique. Trademark law can be complicated, but following are some general categories of names that can and cannot be trademarked to help you get started in your search for the right brand identity.

The Easiest Marks to Trademark

Following are the best types of marks to trademark with success, starting with the easiest type of mark to successfully secure a trademark.

Fanciful or Coined Marks

Marks that are made up (or “coined”) for the sole purpose of identifying a specific business or brand are referred to as fanciful marks. Kodak is one of the best examples of a fanciful mark. Xerox and Febreze are two more great examples. Coined marks are typically the easiest to protect but they might take a larger investment to raise awareness and draw a connection between the name and the brand promise it represents.

Arbitrary Namesjockey

Arbitrary names are typically great for trademarks. In an arbitrary name, a common word is used for an un-related product or in a non-descriptive manner. Great examples include, Apple for a computer company, Macintosh for a computer, Puma for shoes and athletic apparel, Jockey for underwear, or Coach for purses.

Suggestive Names

Suggestive marks are typically unique and suggest a mental association between the name and the features or benefits of the product or service that the name represents. Excellent examples include, Microsoft for computer software, Sharpie for markers, Zappos for an online store, or Flickr for a photo sharing website.

The Hardest Marks to Trademark

Following are the most difficult types of marks to trademark. The list starts with types that you might have a chance to trademark if you can prove your mark is distinctive or has earned a secondary meaning in people’s minds and ends with marks that can never be trademarked.

Descriptive Namapproved denied stampses

A name that simply describes a feature of the product or service it represents is considered to be merely descriptive and cannot be trademarked. For example, “Web Design Magazine” merely describes what the magazine it represents offers. Similarly, it’s unlikely that the name ChildKare would be approved for trademark protection. Even with the creative spelling, the name would still be considered merely descriptive of the service provided.

Geographically Descriptive Marks

Names that simply include a geographic location that describes where you do business are typically not easy to trademark. For example, California Wine or Georgia Peanuts are both names that would have a difficult time obtaining trademark protection.

Surname Marks

If the name you want to trademark is primarily used as a surname, then you probably won’t be able to trademark it. For example, Johnson’s Hotel or Taylor’s Ice Cream would have a hard time getting trademarked without first spending a a lot of time and money establishing the names in the marketplace so they earn secondary meanings in people’s minds.

Generic Names

In order to have a chance of securing a trademark, your name must not be generic. For example, “New York Florist” or “Fast Loans” are too generic to be trademarked. If your brand name can be used to describe an entire category, then it’s probably too generic.

Deceptive Marks

Any name that misleads consumers by falsely describing features or benefits that products and services under that brand umbrella offer cannot be trademarked. For example, a company cannot use the word “organic” in a brand name that’s not actually organic and expect to have its trademark application approved.

Exceptions and Subjectivity

Keep in mind, there are exceptions to every rule. Furthermore, individuals review trademark applications at the U.S. Patent and Trademark Office, and subjectivity in approvals and denials does happen.

The best path for you to follow is to learn about the types of marks that can and cannot be trademarked as explained above. Then you can use that knowledge to develop brand identity elements that have the greatest chance of being trademarked successfully.

That’s the subject of Part 3 of the Brand Identity Trademarking 101 series — how to choose brand identity elements to trademark. Stay tuned so you don’t miss it. You can also read Part 1 of the series to learn what a trademark is and why trademarks matter to businesses.

Images: Flickr, Travis K, Dome Poon, JoelK75

ABOUT THE AUTHOR: Susan Gunelius
Susan Gunelius, MBA is a 25-year marketing and branding expert and President and CEO of KeySplash Creative, Inc., a marketing communications company. She is the author of 10 books about marketing, branding and social media, and her marketing-related articles appear on top media websites such as Entrepreneur.com and Forbes.com. She is also the Founder and Editor in Chief of WomenOnBusiness.com, an award-winning blog for business women.