Can I Trademark Common Words?
To put it simply, common words and phrases can be trademarked in a number of cases. But there is a definitive line that separates how and when a common word can and cannot be trademarked.
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, 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 or phrase. 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 in the marketplace. 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. And that’s because there’s little to no chance that consumers would confuse Honda’s car with Apple’s computer products.
When a Common Word or Phrase Cannot Be Trademarked
The USPTO has rejected trademark applications for common phrases made popular during mainstream news events. 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 current 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 independently 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”.