Protecting Common Words or Phrases as Trademarks

Many people seem to think that they can get “first dibs” on a common word or phrase by filing a trademark – and then sell the mark for a lot of money.

But it’s a lot more complicated than that.

First of all, it’s perfectly OK to use a common word as a trademark. For example, “Apple” is a trademark that refers to a brand of phones, computers, and other electronic and related products.

However, “Apple” probably wouldn’t be accepted by the US Patent and Trademark Office (USPTO) as a trademark for apple juice.

So what’s the difference?

When it comes to computers and iPhones, the word “Apple” is arbitrary. There’s nothing about computers that makes you think of fruit.

However, using “Apple” for apple juice is just a generic term. You’re describing the thing with the name of the thing.

Many other companies, by the way, also use the trademark “Apple” for their products. This has sometimes led to disputes.

Between 1978 and 2006, as Wikipedia notes, there were several trademark battles between Apple Corps (which is owned by the Beatles) and Apple Computer (now Apple Inc.).

Originally, the computer Apple seemed to have nothing to do with the music Apple. That changed when the computer Apple added MIDI chips to its computers and went into the iPod and iTunes music business.

Under 15 U.S.C. Section 1127, a “trademark” is defined as

any word, name, symbol or device, or any combination thereof … used by a person … to identify and distinguish his or her goods … from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

[Emphasis added.]

In other words, you’re not protecting the mark as a stand-alone thing – you’re protecting the mark because it indicates there the product or service associated with that mark came from.

The Trademark Manual of Examining Procedure explains that:

“Widely used messages” include slogans, terms, and phrases used by various parties to convey ordinary or familiar concepts or sentiments, as well as social, political, religious, or similar informational messages that are in common use or are otherwise generally understood. The more commonly a term or phrase is used in everyday speech or in an associational or affinitive manner by various sources, the less likely consumers will perceive the matter as a trademark or service mark for any goods and services.

Messages that merely convey ordinary, familiar concepts or sentiments that are used by a variety of sources in the marketplace are considered commonplace and will be understood as conveying the ordinary concept or sentiment normally associated with them, rather than serving any source-indicating function.

Messages that are used by a variety of sources to convey social, political, religious, or similar sentiments or ideas are likely to be perceived as an expression of support for, or affiliation or affinity with, the ideas embodied in the message rather than as a mark that indicates a single source of the goods or services. Furthermore, goods that feature such messages are typically purchased because of the expressive sentiment conveyed by the message and not because they serve as a means for the consumer to identify and distinguish the applicant’s goods or services from those of others.

For example, the mark “Texas Love” was rejected because it “merely conveys a well-recognized and commonly expressed concept or sentiment” about “love for or from Texas.”

Thus, if you ask a trademark lawyer “can I trademark that?” the answer is unlikely to be a simple “yes” or “no.” It all depends on the context.