The answer to “can I trademark a word or phrase” is always going to be “it depends.”
We wind up saying that a lot in the legal industry, but for a good reason! There are a ton of considerations in even the smallest question, and determining whether a word or phrase is trademarkable is one of those complicated situations.
Even a denial from the US Patent and Trademark Office doesn’t necessarily mean that a word or phrase is off-limits. On appeal, some companies have found that the initial denial didn’t consider modern needs. The best way to determine if you can trademark a word or phrase is to talk to a trademark attorney.
Can I Trademark a Word or Phrase?
The basics of deciding if you can trademark a word or phrase center on two criteria: distinctiveness and use in commerce. Trademark distinctiveness means that it’s something that can easily be associated with your brand and not mistaken for another similar product. Trademark use in commerce means it’s listed on the product, used in marketing, or somehow accompanies the interstate sale of the item.
Nike’s 1988 Just Do It campaign appealed to American customers across all demographics. It has since become an iconic slogan.
Now, if it’s a word or phrase you’ve made up yourself, specifically for your product, then you’ve probably met half the benchmark. You have something that is inherently distinctive.
But what if you’re using a common word or phrase that you want to be associated with your product? For that, you could attempt something called “acquired distinctiveness.” The term may have started out meaning something else, but through use, it became distinctive.
For example, think of Nike and its “JUST DO IT” slogan. Although this is a generic phrase, Nike successfully defended its exclusive right to use the phrase for marketing. The term had become a core piece of Nike’s brand identity—it represented Nike’s values of adventure, courage, and determination. Accordingly, Nike has successfully defended their exclusive right on several occasions.
Or consider Verizon’s 2002 “Can You Hear Me Now?” campaign. Cell phone technology, still in its infancy, was notorious for inconsistent coverage. If you owned a cell phone, chances are you said or heard “Can you hear me now?” at least once or twice a day. Verizon’s ad campaign and slogan, on the other hand, emphasized that customers wouldn’t have to hear those words. Despite its apparently generic nature, the slogan was granted a trademark.
However, you may have noticed one big hurdle in making a word or phrase your own through acquired distinctiveness. Money. If you want to take a word or phrase that’s not easily associated with your brand, you’re going to have to create that association, and that is not cheap. So when you can, it’s always best to aim for something inherently distinctive.
Another thing to note is that there are just certain things that you will never be able to trademark, no matter how much of a budget you’re willing to put in. So it’s best to keep those limitations in mind as you consider branded assets.
What Can’t You Trademark?
It’s important to know what you can’t trademark before you go to the trouble of trying to meet the standards of distinctiveness and use in commerce. While there is room to argue on a lot of criteria, it’s generally accepted that you cannot obtain a trademark in cases where content is:
Merely descriptive: You can’t trademark the name of a product if it’s generically descriptive. For instance, you can’t trademark the word “apple” when discussing fruit. However, trademarking the term “Apple” for a computer company was fine.
Used non-commercially: You can’t own a word or phrase just to hold it. It has to be used in commerce. If you want to trademark at a federal level, that use needs to cross state lines.
Confusing or misdescriptive: If you try to trademark a word or phrase that could accidentally be confused for something else in the same industry, you will be denied. For instance, if you opened a computer parts company called Intol, that would be denied as it is too close to the semiconducting giant, Intel.
Existing: This one may seem obvious, but it’s important to note that there are millions of trademarks out there, many of which you won’t know. Before you consider a trademark, you need to access the Trademark Electronic Search System to determine if the mark is already used in your industry.
You can trademark a word or phrase provided you can meet the distinctiveness and use in commerce requirements. In some cases, it will be easy. In others, you’re going to have to complete a massive marketing campaign to make that phrase your own. In either situation, it’s wise to talk to a trademark attorney to understand your options.
Bold Patents can help you trademark a word or phrase by offering expert, detailed guidance on the process. To discuss your options, contact us online or call 800-849-1913.
Legal Note: This blog article does not constitute legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.