What Cannot Be Protected as a Trademark



Welcome back Andrei Mincov here with Trademark Factory and in this video you will discover what cannot be protected as trademarks.

As I explained in the previous videos of this series (and make sure you watch them first), the function of trademarks is to distinguish products and services of one business from identical or similar products or services of another business. What this means is that trademarks are not designed to grant their owners monopoly over the products or services themselves.

This means three things: you cannot claim the generic name for your product to be your trademark; you can’t register trademarks that describe important characteristics of your products and services; and you cannot “trademark” the functionality of your product.

Indeed, if you sell wizmos, you can’t stop others from also selling wizmos by claiming that “WIZMO” is your trademark. Remember, the function of a trademark is to allow you to help customers find your wizmos among wizmos offered by your competitors, not to allow you to corner the market for wizmos altogether. This is often referred to as using the trademark as an adjective, as opposed to as a noun.

Again remember: “Which?”, not “What?”.

You should also make sure that your once original trademark does not become generic, in which case it will stop functioning as a trademark. This was the case or almost the case with Aspirin, Kleenex, Xerox, Thermos, Jacuzzi, Linoleum and several others. This is where you should be very careful about your marketing strategy. From the marketing perspective nothing can be better than millions of customers using your brand name as in “I need a kleenex” or “Let me google that for you”. However, from the trademark law perspective, such use should be discouraged, because it may lead to the death of your trademark rights. Instead you should promote the use of “I need a Kleenex tissue” and “Let me use Google search engine for you”.

Of course, most small business owners would say that it is a great problem to have. But even though too much fame may not seem to be a problem at the early stages of your business, this should become a consideration as you grow your business into something that will have resalable assets.

Also, you can’t register as a trademark a word that describes an important feature or characteristic of the goods or services. This is what they call “a clearly descriptive trademark”.

For example, you can't trademark COLOR for printers, or SAFE for cars, or JUICY for apples, or SWEET for ice cream, and PERFECTLY CLEAN for dry-cleaner services.

All good apples could be described as "juicy" and all ice cream as "sweet"; these are natural characteristics of the products. If you were allowed to register these words, no other apple sellers or ice cream vendors could use them to promote their goods; this would be unfair. The rationale behind this is to allow others to use such descriptive words in the marketplace.

Similarly, if the shape of your product is driven by certain functionality, you are not allowed to claim this shape as your trademark, simply because this would give you the monopoly on the functionality (which Is a proper subject of patent protection, but not trademark protection).

The most famous examples of when companies unsuccessfully tried to claim trademark protection over the functionality of their products in Canada was in connection with LEGO blocks and the shape of a 3-head electric razor. In both these situations, the court found that what the companies really were attempting to protect was a monopoly to make the product, not to distinguish their product from similar products of others.

In the next video you will learn more about limitations of trademarks you will learn that a trademark does not give an absolute monopoly over words and images.

But for now, if you have any questions regarding trademarks, copyright, or other intellectual property issues, you know where to find me. Call us, email us or go to our website at TrademarkFactory.com.

Thank you for watching. Talk to you soon.

Watch our other FAQs or leave your comments below!

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Watch our other FAQs:

Introduction — What Every Small Business Owner Needs to Know About Trademarks
What Are Trademarks and Why Do We Need Them?
Trademarks vs. Trade Names
Trademarks Don't Give Absolute Monopoly Over Words and Images
Registered ® vs. Unregistered ™ Trademarks
7 Benefits of Trademark Registration
When Should You Register Your Trademarks
What is the Trademark Registration Process
Trademark Tips & Tricks