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

Description

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.