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Trademark Protection for Common Words and Phrases: Limitations, Conducting Searches, Grounds for Refusal

Recording of a 90-minute premium CLE video webinar with Q&A

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Conducted on Tuesday, May 9, 2023

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This CLE webinar will guide IP counsel on the trademark prosecution of common words or phrases. The panel will discuss the refusals common words or phrases may run into at the U.S. Patent and Trademark Office (USPTO) and examine recent TTAB decisions involving such words or phrases. The panel will discuss how practitioners should handle searches for and clearance of marks involving common words and phrases and offer best practices for prosecuting a trademark application for these words and phrases.


Trademarking common words can define a business, but it can be complicated. Trademarking a single word is not always possible. One of the best known examples of trademarking a common word is by Apple Inc. The company would not have been able to trademark "apple" if it was selling apples. Other examples include Shell, Time, and Caterpillar. While these words are common, none of them describe the company or product it represents.

One of the challenges that arises when seeking to register a common word is that another company has already registered the mark. However, this does not necessarily preclude registration. For example, The Ohio State University trademarked the word "the," submitting its trademark application months after Marc Jacobs applied for trademark protection for the word "the."

When planning to trademark a common word or phrase, it is critical for companies and their counsel to conduct a comprehensive trademark search before filing an application. Companies should also be aware of the types of refusals that may result and take steps to minimize the risk of such refusals. Further, if a company successfully trademarks the word, it does not mean that others cannot use the common word.

Listen as our authoritative panel of IP attorneys examines trademarking protection for common words and phrases. The panel will address the refusals common phrases may run into at the USPTO. The panel will also discuss recent TTAB decisions involving such phrases and how practitioners should deal with searches for and clearance of marks involving phrases. The panel will offer best practices for prosecuting a trademark application for common words.



  1. Trademarking common words and phrases
    1. Requirements
    2. Challenges
    3. Refusals
  2. Recent TTAB and court decisions
  3. Clearance searches
  4. Best practices for trademarking common words


The panel will review these and other relevant issues:

  • What types of refusal has the TTAB used to deny registration of common words or phrases?
  • What best practices should counsel employ to register a trademark for a common word or phrase?


Gallagher, Patrick
Patrick J. Gallagher

Barnes & Thornburg

Mr. Gallagher has deep experience in trademark clearance, investigation, prosecution, as well as client counseling and...  |  Read More

Littman, Molly
Molly R. Littman

Greenberg Traurig

Ms. Littman focuses her practice on intellectual property litigation and enforcement. She has significant experience...  |  Read More

Noordyke, Mayura
Mayura I. Noordyke

Trademark Counsel, Global IP

Ms. Noordyke is an intellectual property attorney and serves as Trademark Counsel, Global IP at Medtronic.  She...  |  Read More

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