What can and can't be trademarked?

Choosing your trademark name may be one of the most important decisions you make when starting up your business. Your trademark forms the face of your brand and so it needs to be strong, distinct and memorable. Therefore when choosing your trademark name  you want to pick one that is least likely to be rejected by the trademark authorities.

The three main types of name that can be successfully trademarked are suggestive, arbitrary or fanciful names. A fanciful name is a made up name that bares no resemblance to the real name or a description of the goods or services, for example “Kodak”. “Dove” is an arbitrary name as it is used for soaps and has nothing to do with the bird. An example of a suggestive name is “Greyhound”, used for the coach company, because it only suggests the possible nature of the goods or service it is used for without describing them.

However, there are many types of names that can never be trademarked. Generic names are one of these types. These names describe a type of good or service and are therefore never allowed to be trademarked. However a trademarked word can become generic if consumers begin to use the term for a genre of goods rather than a specific one. A famous brand that became generic for this reason is “Hoover”.

Generally, surnames cannot be trademarked if their main function is to be a surname . The only exception to this rule is if the surname in question has become distinct in the marketplace. McDonalds is a perfect example of a successfully trademarked surname and that was allowed to be registered as a mark due to its distinctiveness in the fast food marketplace.

Descriptive marks describe a function or feature of the product, for example “soft & fluffy” for a cushion company, and cannot be registered as trademarks. These marks can also be images that show an important aspect of the goods for example an icecream cone for an icecream company. Even if the description is in a foreign language for example, “caffe crema” these still count as descriptive marks as the product of creamy coffee is still being described.

Deceptive marks are never allowed to be registered  by the trademark authorities since they are mislead the customer to believe something that is not true about their product. For example “Strawberry Kiss” for a milkshake would be a deceptive mark if the milkshake flavour was actually raspberry.

A geographically descriptive name includes a real geographical location for example “Yorkshire sausage rolls”. These cannot be trademarked or protected unless it can be proven that consumers associate the product with the specified location. Scotch Whisky is an example of a geographically descriptive name that has protected Geographical Indications (sui generis intellectual property rights) and because of this, the companies that produce the Scottish whisky are able to maintain their excellent reputations and ward off any potential infringements.

Other types of marks that cannot be registered under any circumstances are names of living individuals, flags, rude expressions, terms that could cause false association an existing person, religion or  institution, coats of arms, protected phrases and images.

A trademark is a worthwhile investment as it will protect your brand and allow you to enforce your trademark rights over other companies that may infringe upon your mark. Before choosing your brand as well researching the trademark names that are available in your chosen marketplace you should also make sure that your chosen name is one of the three approved types, arbitrary, fanciful or suggestive, to reduce the chance of it being rejected by the trademark authorities.

For advice and more information on searching, acquiring, registering and enforcing Trademarks please visit our website, http://www.lipex.com.
Our unique database of trademarks for sale or license could save you time and help protect your brand.