Trademark Registration of Common Words or Phrases
Clients oftentimes call me to ask if they can get a trademark registration on a “common word” or a “common phrase.” The question itself is always asked with a doubtful tone, as if they already know the answer is “no.” However, to their surprise, the answer is a resounding “YES!”. Or at least in some cases it is.
One example that I like to give to clients is that of Apple Inc., the famous computer and software manufacturer. The word “apple” is a very common word, and yet Apple Inc. had no problem trademarking the term “APPLE” for computers and computer programs. Why was this allowed? Because the word “apple” is an arbitrary word when used in connection with the manufacture and sale of computers and computer programs. That is, there is nothing about computers or computer programs that relates to “apples”. Accordingly, the term “APPLE” is actually a pretty strong trademark, as is the case when you apply a completely arbitrary term (however common it may be) to promote your products or services.
The case would be much different if someone wanted to get a trademark on the word “APPLE” in connection with the sale of apples (the fruit). In that case, the name “APPLE” would simply be a generic term for the type of goods being provided, namely, apples. Because of this, the Trademark Office would never issue a federal trademark registration for the term “APPLE” if the only products being provided were fruit products.
Common words or phrases are therefore well within the scope of trademark protection, so long as the words or phrases in question are not generic for the types of products or services being provided. After all, how else would TIME (the magazine), SHELL (the energy giant), and CATERPILLAR (the equipment manufacturer) get their trademark registrations?