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The Zest

What Can Be Trademarked? More Than Names, Fewer Things Than You'd Hope

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Almost anything can be a trademark if customers use it to tell whose product or service they're looking at. That includes names, logos and slogans, and it can also include sounds, colors, scents and the look of a product or its packaging. What can't be trademarked is anything that fails that test, plus a specific list of things the law bars from registration no matter how well they'd work.

The test is what it does, not what it is

The Lanham Act defines a trademark as any word, name, symbol or device, or any combination of them, used to identify and distinguish one seller's goods from another's. That language is broad on purpose. In 1995 the Supreme Court read it to cover a color, and said in the same opinion that shapes, sounds and scents had already been recognized as marks.

So the category of the thing is rarely the problem. The questions are whether it identifies a single source, and whether one of the statutory bars applies.

Words, logos and slogans

These are the everyday trademarks, and where most small businesses start.

Words and names. A brand name, a product name, a service name, the name of a program or a podcast. A word mark is usually filed in standard characters, which means the claim is to the wording itself and not to a font, size or color.

Logos and designs. A symbol, a stylized version of the name, or the two together. A logo is filed as its own application, separate from the words. Which to file first is covered in the article on word marks versus logos.

Slogans and taglines. A phrase can register when customers see it as pointing to one company. Phrases that read as a common saying or a general message tend to be refused, a point covered in the article on slogans, catchphrases and hashtags.

Any of these still has to be distinctive enough. A word that only describes the product generally won't register without proof that customers have come to link it to one source. How that scale works is in Why "Best" Names Make the Worst Trademarks.

Sounds, colors and scents

These are sometimes called nontraditional marks. They can register, but most need more proof than a name does.

Sounds. NBC's chimes and the MGM lion's roar are both on the USPTO's own list of sound mark examples. The USPTO's examination manual says a sound can register when it's arbitrary, unique or distinctive enough that listeners link it to one source. Commonplace sounds, and sounds a product makes in normal operation, like an alarm clock's ring, need proof that customers have come to treat them as a brand. Because a sound can't be drawn, the application uses a detailed written description of the mark instead of a drawing.

Colors. In Qualitex Co. v. Jacobson Products Co., the Supreme Court held that a color alone can be a trademark. The color there was a green-gold used on dry cleaning press pads. The catch is that a color on a product isn't treated as a brand signal automatically. It's generally protectable only after it has acquired what the law calls secondary meaning, which means customers have learned to associate that color with one source. It also can't be functional.

Scents and flavors. The classic example, cited by the Supreme Court in Qualitex, is a plumeria scent on sewing thread. The USPTO's manual says a scent can register if it's used in a nonfunctional way, which rules out the scent of products people buy for their smell, like perfume or air freshener, and that the amount of evidence needed is substantial. Flavor is harder still. The manual says a flavor is never inherently distinctive, because customers generally take it as a feature of the product.

Product shapes, packaging and trade dress

Trade dress is the overall look of a product or the way it's presented. Courts have described it as a product's total image and overall appearance. It can cover packaging, the shape of the product itself, or even the look of a restaurant, which is what the Supreme Court dealt with in Two Pesos v. Taco Cabana.

The rules split by type. Packaging can sometimes be distinctive from the first day it's used. Product design can't. In Wal-Mart Stores v. Samara Brothers, the Supreme Court held that the design of a product is protectable only on a showing of secondary meaning, because customers usually see a product's shape as part of the product and not as a brand.

Trade dress also runs into the functionality bar more than any other kind of mark, which is the first item on the next list. For how this plays out with lookalike products, see the article on dupes and trade dress.

What can't be registered

Some of these are absolute. Others can be overcome with evidence.

  • Functional features. If a feature is essential to the use or purpose of a product, or affects its cost or quality, it's functional and can't be a trademark, even if customers recognize it. Protecting useful features is the job of patent law, and patents last for a limited time.
  • Generic terms. The common name of a product or service can't be registered for that product or service. The USPTO's examples include "bicycle" for bicycles and "bagel shop" for a bagel shop.
  • Marks too close to someone else's. The USPTO refuses a mark that's likely to cause confusion with one already registered.
  • Deceptive matter. The statute bars marks that consist of or include deceptive matter.
  • Government flags and insignia. The flag, coat of arms or other insignia of the United States, a state, a municipality or a foreign nation can't be registered.
  • A living person's name, portrait or signature without consent. A mark that identifies a particular living individual needs that person's written consent. The Supreme Court upheld this rule in 2024 in Vidal v. Elster.
  • Merely informational matter. Wording that only conveys general information, or a message used widely by many people, isn't seen as a brand. The USPTO's manual lists refusals of phrases like DRIVE SAFELY for cars and PROUDLY MADE IN USA for electric shavers.

Then there's a middle group that's refused at first but can register with proof of acquired distinctiveness: terms that merely describe the goods, names that are primarily a surname, and names that primarily describe where the goods come from.

Two bars that used to be on this list aren't enforced anymore. The Supreme Court struck down the bar on disparaging marks in 2017 in Matal v. Tam, and the bar on immoral or scandalous marks in 2019 in Iancu v. Brunetti, both on First Amendment grounds.

Registrable in theory isn't the same as available

Everything above is about what kind of thing can be a trademark. Whether your particular name, logo or package can register is a narrower question. It depends on what you use it for, how you use it, and what other people already have on the register. A category being open doesn't mean a specific mark in it will get through.

If you're weighing whether something in your business could be registered, the services page explains how the search and filing packages work, and the FAQs page answers most of what comes up before a first call.

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(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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