Things You Can’t Trademark

I get asked a lot of questions around trademarks, so I thought I’d start a “mini-series” if you will, to help answer some of them.  The first thing we’re going to talk about is things you can’t trademark.

There are a lot of concepts and a lot of particulars around getting a trademark, and unless you’re an attorney, you probably won’t be familiar with them.  There are a lot of important things to know if you’re considering getting a trademark or if you’re in the process of getting a trademark that may come up at some point.

Let’s start with some things you can’t trademark.  As with most things, there are always caveats, and we’ll discuss what some of those are later on.

Things You Can’t Trademark:

1)  Something that is primarily a surname

If you’re looking to trademark your business’s name, and the business name is comprised primarily or your last name, it’s going to be tricky to get a registered trademark.  For example, Johnson’s Lawn Service is probably going to have a tough time getting a registered trademark for that name.

2)  Something that is overly descriptive or suggestive

In layman’s terms, this means something that describes the goods or services your business provides.  Let’s look at our friend Johnson’s Lawn Service again. Not only is it primarily a surname, but “lawn service” is descriptive of the services provided, ie. lawn care. When you see the name “Johnson’s Lawn Service,” most people are going to assume that some guy (or gal) named Johnson provides lawn services. The USPTO generally will not register a trademark that is overly descriptive.

3)  Something that is primarily geographic

If your business’s name has some sort of indication as to where you’re located, again, this will be tricky to get trademarked.  Let’s say Johnson decided to change the business name to Lawn Service of Colorado.  Unfortunately, Mr. Johnson still wouldn’t be able to get a registered trademark because “Colorado” presumably describes where the business is located.

4)  Something that is primarily ornamental

I talk to a lot of clothing designers who want to register a trademark for their clothing line’s logo or a phrase that they want to put on the clothes.  However, often times the intended use of the logo or phrase is going to be considered “ornamental” by the USPTO.  Trademarks are intended to indicate the source of a good or service. When you put your company’s slogan on the garment tag of a shirt, that tells consumers that the shirt came from your company. But if you only put that slogan on the front of the shirt in big, bold letters, that does not necessarily indicate to consumers the source of the goods. A good way to think about it is if a consumer is buying your product because the logo or slogan appears on the product, then it is probably an ornamental use.

As I said earlier, there are always caveats and exceptions to these rules.  A few of those exceptions are the supplemental register and acquired distinctiveness (more on that later).

Curious if you can get a trademark for your business’s name, logo, or slogan? I’d be happy to help! Click here to schedule a consultation now.