What Can’t Be Trademarked?
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While it is true that almost anything can be protected as a trademark, the context around its use makes a big difference. Choosing a trademark carefully is important to avoid pitfalls and to support the long-term growth and strength of a brand.
Generic vs. Distinctive Terms
A classic example of how context matters is in the generic, descriptive, suggestive, and arbitrary scale of trademark analysis.
Generic terms are terms that are the common name for a set of goods or services. No one should be able to monopolize the common name of a good or service since it would stifle competition. So, you’d never be able to protect the word “APPLE” as a trademark for apples. But that same word, “APPLE” when used in connection with a totally unrelated good like computers, is no longer a generic term. “APPLE” for use in connection with computers is considered an inherently distinctive and arbitrary trademark; basically, the best and highest category of protectability in the trademark spectrum.
Descriptive Marks and Secondary Meaning
Although context matters, context can sometimes be overcome. This plays out in connection with descriptive trademarks all the time. Descriptive trademarks are those that describe a quality, feature, or purpose of the goods or services offered. Descriptive marks come in many different kinds, like geographically descriptive, descriptive as merely a surname, or laudatory. Descriptive terms are not inherently distinctive. They only become protectable if they acquire distinctiveness, also known as secondary meaning, through long, continuous, and exclusive use supported by strong marketing and consumer recognition.
Examples include:
- FORD: originally a surname, now recognized worldwide as a car manufacturer.
- AMERICAN AIRLINES: originally descriptive, now associated with a specific airline.
However, “FORD” has been used in connection with cars for so long that when you mention buying a “FORD” car, you probably aren’t thinking about a person named Ford and are instead thinking about that company historically based in Detroit that makes F-150s, Mustangs, and Explorers. That change in consumer mindset from thinking of the descriptive meaning of the term to thinking about the term as identifying a particular source of goods is the root of acquired distinctiveness (sometimes referred to as “secondary meaning”) and converts otherwise unprotectable descriptive terms into protectable trademarks.
It is important to note that not all descriptive terms are capable of acquiring distinctiveness. Trademark law specifically excludes deceptive or misdescriptive terms from ever becoming protectable.
The United States Patent and Trademark Office (USPTO) uses a two-part test to decide whether a mark is “deceptively misdescriptive.” They ask:
- Does the mark misdescribe the goods or services?
- Would consumers be likely to believe the misdescription?
For example, if you tried to protect the term “SILK TOUCH” for use with bedsheets that contain no silk, the USPTO would likely object. The mark misdescribes the goods, and consumers would reasonably expect silk in sheets marketed under that name.
By contrast, a trademark like “MOON PIE” for snack cakes is not considered deceptively misdescriptive, even though it technically misdescribes the product. That is because consumers are unlikely to believe the pies were made on the moon or contain ingredients from the moon.
Scandalous, Disparaging, or Personal Names
A class of trademarks that is still the subject of a lot of confusion is scandalous or disparaging content. Until 2017, both of these categories were not eligible for registration. However, in 2017, the Supreme Court held that prohibiting registration of trademarks that are merely disparaging discriminates based on the applicant’s viewpoint and struck down the rule as unconstitutional under the Free Speech Clause of the First Amendment. Two years later, in 2019, the Supreme Court struck down the prohibition against registering immoral or scandalous matter on First Amendment grounds. But the Supreme Court has struggled to find the limits of its new love of the First Amendment in the context of trademark law and upheld refusal to register “TRUMP TOO SMALL” in 2024 on the basis that the name clause of the Trademark Act (also called the Lanham Act) bars registration of the name of a living person without that person’s consent.
Government Symbols and Insignia
Trademark law also bars registration of official government insignia like state and national flags or government branch and agency insignias. Of course, that doesn’t mean you can’t use a U.S. flag in your trademark, it just means that everyone else can use it too.
Confusingly Similar Marks
You cannot register a mark that is confusingly similar to an existing one. If consumers could be misled about the source, sponsorship, or affiliation of goods or services, the new mark will be refused protection.
Trade Dress and Functionality
Trade dress is the distinctive overall look and feel of a product or its packaging that identifies the source of the product to consumers. Trade dress is notoriously tricky to protect and deserves more detailed discussion. That said, the limits of trade dress include functionality. You can’t protect trade dress that is primarily functional since other competitors should be permitted to compete based on the same functionality. The exception to this is in patent law, which does protect functionality. But patent law offers a time limited protection, and once that patent protection expires, you cannot recapture that protection by claiming that the subject of the patent is now protectable trade dress.
The Bottom Line
Knowing what cannot be trademarked is just as important as knowing what can. Generic terms, descriptive phrases without secondary meaning, deceptive marks, government symbols, names without consent, and functional features all fall outside the scope of trademark protection.
If you are unsure whether your brand elements qualify, a trademark clearance search and legal opinion can save significant time, money, and frustration. Trademarks are powerful business assets when built on a solid legal foundation.
To ensure your brand is fully protected, contact Jimerson Birr.