What Can And Can’t Be Trademarked

Would it really surprise you if you were to learn that every famous, distinctive brand logo you witness is guarded or trademarked? A trademark is a type of intellectual property, widely used by companies, brands, or entities to protect their name, their symbol, their tagline, or their logo to distinguish their services, act as an indicator of source, and separate it from that of their competitors.

The brand Nike doesn't necessarily have to print their name on a pair of shoes to display its identity. Its trademark, the famous 'tick mark’, is sufficient identification of its maker. That's precisely how a trademark is supposed to work. Did your trademark lawyer or agent elaborate on the limitations as to what can and can't be trademarked?

What CAN Be Trademarked?

You can certainly trademark a distinctive name, symbol, logo, tagline, graphic, or a combination of all or some of these elements. It's important that the above-stated elements remain distinctive since it is imperative that you are able to highlight the originality of your trademark so that there is no confusion with an already existing trademark.

What CAN'T Be Trademarked?

Naturally, there are limitations to the names or symbols that can be trademarked. Let's look into these limitations with greater detail, just like a responsible trademark lawyer or agent would ask you to!

Lack of Distinctiveness

We have witnessed instances of rejected trademark applications for lacking a genuinely distinctive element. For instance, if your mark or symbol overcompensates for a lack of distinctiveness with extra descriptiveness, additional relevant information, or directions of use, your mark enters the realm of being too 'generic’ and can face rejection.

Generic Messages

Commonplace terms, phrases, or popularly used expressions can't be used as a trademark as there's nothing distinct about the term. For instance, phrases like 'Go Green’, 'Occupy Hollywood’ or ‘Proudly Canadian’ shouldn't be used as a trademark as the risk of a refusal is high.

Names

Trademarks that are merely names or surnames are not registrable in most cases. The reason for this is to prevent someone from having a monopoly over someone else's name. There are, however, exceptions. McDonald's has a registered trademark for what is clearly a surname. How did they do it? By acquiring distinctiveness through years of use, they were able to establish that the public related McDonald's to their restaurant services.

Confusion with Existing Trademarks

It goes without saying that you can’t trademark a sign or a symbol that shares substantial similarities with an already existing trademark in the same field of use. It is a worthwhile exercise to find already trademarked phrases before you finalize your trademark choices.

If you’re facing complications with the trademark registration process, or if you desire further information about the protection a registered trademark will fetch you, contact our team for assistance.