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Can You Trademark a Word? Yes, but You Don't Get the Whole Word

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Yes. A single word can be a trademark, and that includes ordinary dictionary words as well as invented ones. What you can't do is take a word out of the language. Trademark rights attach to a word as used for particular goods or services, and they stop there.

That limit answers most of the follow-up questions people have, so it's worth starting with it.

You get the word for something, not the word

The USPTO lists this as a common misconception about trademarks: that having one means you legally own a word and can stop everyone else from using it. You don't. Your rights cover how the word is used with your goods or services.

Two things follow from that.

First, other businesses can often use the same word for unrelated things. Whether two uses conflict depends on whether customers would likely be confused, and that turns on both how similar the marks are and how related the goods or services are. The same word on products that have nothing to do with each other can sometimes coexist.

Second, everyone keeps the right to use the word for what it ordinarily means. The Lanham Act recognizes a defense for using a term fairly and in good faith, not as a brand, only to describe your own goods or services. A registration for a word doesn't stop a competitor from using that word in a sentence to say what their product is or does.

Common words: it depends on what you're selling

A dictionary word can be a perfectly good trademark. The question is how the word relates to the product.

The USPTO's standard example is Apple. For computers, "apple" has nothing to do with the goods, so it works as a trademark. For apples, the same word couldn't be registered, because it just names the thing being sold.

Between those two ends are words that describe something about the product. The USPTO's example is "creamy" for yogurt. A word like that generally can't be registered on its own, because it tells customers about the product and not about who makes it. It can become registrable if, over time, customers come to connect it with one company. The statute lets the USPTO accept five years of substantially exclusive and continuous use as prima facie evidence of that.

So the same common word can be strong, weak or unavailable depending on what it's attached to. I've written about that scale in detail in Why "Best" Names Make the Worst Trademarks, so I won't repeat it here.

Made-up words: strong, but not automatically clear

An invented word, one that had no meaning before you coined it, is the strongest kind of word mark. The USPTO's examples are Exxon for petroleum and Pepsi for soft drinks. Because the word means nothing else, there's no argument that it describes the product.

One caution applies. A made-up word still has to be available. The USPTO compares marks by sound, appearance and meaning, and the marks don't have to be identical to conflict. A coined word that sounds like an existing brand for related goods can be refused even though you invented the spelling. Checking for that before you commit to a name is covered in the article on searching before you file.

Generic words: never, for the thing they name

A generic term is the common name for a product or service. The USPTO puts it bluntly: generic terms aren't even trademarks. Its examples are "bicycle" for bicycles and "bagel shop" for a bagel shop. Generic terms can't be registered, and the Supreme Court has described them as ordinarily ineligible for trademark protection at all.

There are two wrinkles.

Whether a term is generic depends on what it means to customers. In 2020, in USPTO v. Booking.com, the Supreme Court rejected a blanket rule that adding ".com" to a generic word always produces a generic term. The Court said a term like that is generic only if consumers understand it that way. That decision didn't make generic words registrable. It confirmed that the test is consumer perception.

Generic status can also arrive later. A word that started out as a brand can become the generic name for the product if the public comes to use it that way. The Lanham Act allows a registration to be canceled at any time if the mark becomes the generic name for the goods or services, and it measures that by the primary significance of the mark to the relevant public. Even a registration that has become incontestable isn't shielded from this.

Words that are just messages

There's one more reason a word or short phrase can be refused, and it has nothing to do with being descriptive or generic. If people would read the wording as a message and not as a brand, the USPTO treats it as failing to function as a trademark.

The USPTO's examination manual gives examples of refused wording: DRIVE SAFELY for automobiles, ONCE A MARINE, ALWAYS A MARINE for clothing, and FRAGILE for labels and bumper stickers. The more widely a word or phrase is used by many different sources, the less likely customers are to see it as pointing to one of them. According to the manual, this kind of refusal can't be overcome by claiming the wording has become distinctive through use.

This can come up with a trending word or phrase printed on merchandise. The word may be popular precisely because everyone is using it, which is the problem.

What a word registration covers

When you register a word, you usually file it in what the USPTO calls standard characters. That means the claim is to the word itself, with no claim to any particular font, style, size or color. A standard character filing is available only when the mark has no design element.

That's different from registering a logo that contains the word, where the claim is to that specific design. Which to file when you have both is covered in the article on word marks versus logos.

A few kinds of words have their own rules. Last names are one, and place names and foreign words are others. If your word falls into one of those, the general picture here still applies, with an extra layer on top.

So, restated: you can trademark a word, common or invented, when it identifies your goods or services and isn't simply what they're called or what they are. You get that word for those goods or services. The rest of the language stays open to everyone else.

If you have a word in mind and want to understand how it would be looked at, the services page walks through the search and filing packages, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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