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.
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Can you trademark a phrase or common word? Chances are, we’re all familiar with at least one generic word that is registered as a trademark. You may even be using one of their devices to read this.
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”?
Language is ever evolving, shaped by centuries of iteration, elimination, and re-creation. Words fall by the wayside and some, for better-or-worse, storm our vernacular over the course of a matter of months. To a degree, however, many are unaware of how greatly our language is influenced by one of those most ubiquitous institutions in the world: commerce.
Throughout history, words have taken on meaning and left it behind, becoming “genericized” in our everyday language. Many of these were once trademarks; brands championed by entrepreneurs and industry tycoons whose achievements have so permeated our culture that they cease to belong to a single entity.
Of the myriad words in our language that used to carry a royalty fee, several were born at the advent of the Industrial Revolution. With savvy businessmen eager to profit from this innovative age, it is no wonder that many common items became the subject of trademark registrations. In 1854, Abraham Gesner, in conjunction with the North American Gas Light Company and the Downer Company profited from the trademark of the term Kerosene. The term, likely derivative of the Greek term for was, keros, is now used for any mixture of petroleum chemicals used for heating, fuel, or as an insect repellent.
In 1897, Charles Seeberger redesigned a Coney Island novelty ride that transported passengers up a moving staircase. Manufactured by Otis Elevator Company, the Escalator became a part of the vernacular before being genericized in 1950 when the patent was lost.
Silicon Valley’s Intellectual Property disputes over website names, brands, and even color schemes are a distant grand-child to the technology registrations of the mid-to-late century. One such mark is “touch-tone”, a technology invented in 1962 and manufactured by Bell Telephone. The term appeared in the 1960s as a trademark but did not receive widespread use until the 1980s.
Another now-archaic technology that permeated prose was the “videotape”. Invented in 1951 by Charles Ginsburg and his research team and manufactured by Ampex, the term simply would not escape the home media conversation until the advent of DVDs in the late 1990s.
More to Come
Each example provides an interesting look into how our language forms, but more importantly, what happens to trademarks once they run out, grow-up, or disappear. Today’s Internet is tomorrow’s “internet,” and each passing decade promises to standardize and genericize more and more innovations. Whatever the future of language holds, we can be sure that, with terms like “Tweet”, “StumbleUpon”, and “Google” floating around, it will be nothing if not colorful.
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, as with trademarking quotes, 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”.
How to Trademark a Word – Step by Step
There are 4 general steps to getting your trademark, as we covered here.
- Perform A Comprehensive Search
- File a Trademark Application
- Monitor Your Application
- Finalize Your Registration
More Detail on the Steps
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?
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.
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.
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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