Trademark Registration of Common Words or Phrases
Last updated 11/17/2017
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.
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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, even the best trademark attorney wouldn’t be able to help you with that attempt.
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”?
Context is Everything
Trademarks are 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?
There are Limits
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”.
Getting Your Trademark
There are 4 general steps to getting your trademark, as we covered here.
- Perform A Comprehensive Search
- Do you like wasting money? If so, then you can skip Step #1. For everyone else, performing a comprehensive trademark search is the most important step in the process. How can you expect the USPTO to approve your trademark application if you haven’t checked to make sure that it isn’t too similar to another registered trademark?
- File a Trademark Application
- If you did your due diligence with Step #1, you’re ready to file your trademark application. In one way, it’s as easy as filling out an online form. In another way, there are some complexities. You of course have to fill out the application with care and attention to detail.
- Monitor Your Application
- The third step is the easiest of them all, but it’s also the most frustrating. You’ll probably spend a lot of time refreshing web pages, hoping that there’s some update on your trademark application. Chances are that after you file your application you’ll have some waiting to do. The general timeline before you hear anything is 4 to 6 months
- Finalize Your Registration
- Approval of your trademark application is a big milestone, but it is not the end of the process. Although the USPTO has many resources at its disposal, it cannot examine likelihood of confusion in the same way as trademark owners can. Any companies that believe your registration may infringe on their own trademark rights has 30 days to state its opposition. If no company opposes your mark, congratulations! The USPTO will send you a certificate of registration by mail.
The process can be complicated. And, given the long waiting periods, a mistake can set you back several months. The video below explains how we can simplify the process by doing the heavy lifting for you:
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My experience working with Xavier Morales has been extremely positive.
Mr. Morales is very professional and knowledgeable in his craft. I have used Mr. Morales more than once and he always takes the time to thoroughly explain the trademark process and always gives great advise should you ask his opinion. Mr. Morale’s response time is fast and efficient and his fees are extremely reasonable and competitive. I plan on using Xavier Morales again in the future anytime I need trademarking.
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