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.” To their surprise, however, 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. Nor did Apple Rubber Products, John Middleton Co., and Scholastic, Inc. All of those companies, and many others, own trademark rights to the single word “APPLE”.
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, or tobacco products, or educational materials. That is, there is nothing about these products 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 United States Patent and Trademark Office (USPTO) would never issue a federal trademark registration for the term “APPLE” if the only products being provided were fruit products.
The example of “APPLE” also illustrates an important point when trademarking a common word. Just because Apple Inc. has trademarked “APPLE” does not mean that they own the word in all instances. How could they, if Scholastic, Inc. and John Middleton Co., among many others, have also trademarked “APPLE”?
Trademark is not about owning a word or phrase. It is about providing companies with distinctiveness and preventing consumer confusion. If another company producing computers or computer programs called itself Apple Hardware or Apple Electronics, then Apple Inc. could sue them for trademark infringement. But if Honda wanted to create a car called the Honda Apple, then Apple Inc. would have a very hard time getting them to stop. There is little to no chance that consumers would confuse Honda’s car with Apple’s computer products.
Further proof that registering a trademark does not bestow total ownership of the word: six different companies have trademark registrations for the word “TRADEMARK”. There are another 10 going through the process with the USPTO. Yet each company uses the mark for its own distinctive products, and none confuses consumers by using the term in association with said 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?
On the other side, the USPTO will reject trademark applications for common phrases under certain circumstances. In 2014 the USPTO rejected nine applications for the phrase BOSTON STRONG, which grew from the 2013 Boston Marathon bombing. In rejecting, the USPTO wrote that “consumers are accustomed to seeing this slogan or motto commonly used in everyday speech by many different sources.” They decided similarly in 2002, when many companies filed trademark applications for the term “LET’S ROLL”, which was associated with the passengers on United Airlines Flight 93 on September 11, 2001.
Phrases that become popular during news events are not the only common words and phrases the USPTO might reject. In 2007 the USPTO rejected a trademark application for the word PODCAST. In their final Office Action, they stated: “The mark immediately describes and names the characteristics and features of the goods. Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1) of Trademark Act.” Since the term podcast has acquired a meaning of its own, no one can trademark it by itself when used in connection with podcast-related products or services. There are a number of active trademarks that use the word PODCAST, but they all contain the standard disclaimer: “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘PODCAST’ APART FROM THE MARK AS SHOWN”.