Trade marks attorney Jacqui Pryor answers some of the most frequently asked questions surrounding trademarking – and in particular, trademarking words, names or simple phrases.
Can I trademark a word?
Yes, so long as it meets the overriding definition of a trademark – being a sign that you will use to distinguish goods/services from others. This means, not being too descriptive/generic, and also that it does not conflict with earlier filed trademarks in Australia. A single word can meet this requirement. For example “Google” is a single word, and acceptable and registered as a trade mark in relation to an internet search engine (and, a range of services and products offered under this trademark).
Can I trademark my own name?
Sure can. Again, noting it must meet the above definition and general requirements for trademark registration. Common names for common goods/services can be challenging. Examiners may determine the name is not capable of functioning as a trademark because others with that common name are likely to need to use it for those same sorts of goods/services. There are, at times, way to overcome this.
Further, if you happen to share your name with a famous/well known person, other objections might arise. If the examiners feel that use of the name is likely to mislead consumers into believing your products/services are endorsed by that famous person a report would be issued advising that the mark cannot be registered. Again, there can some times be ways to address this (for example, obtaining consent if viable from the well-known person, which provides their permission to use their name in the trademark).
Is it possible to trademark a generic word like “chocolate”?
As trademarks are registered in accordance with the goods/services they are used to identify, it is possible to register common words but not necessarily for their common goods.
Chocolate, if filed in relation to confectionery goods would be rejected as it’s way too descriptive. However, Chocolate applied for in relation to (for example) music instruments might be acceptable, as it is not the common name one would use to describe a musical instrument. Basically, this comes down to the question of whether other people would likely need to use the same trademark for the same goods/services. Others would have genuine need to use the word Chocolate for confectionery products, but would not need to use Chocolate as a brand or description of a musical instrument.
A great example here is Apple. If filed in connection with apples (fruit) it would be rejected. However, as we know it has been a successful brand (and is registered as a trademark) for computers and related goods/services.
What about a domain name? Can I trademark that?
Yes, you can register a domain name as a trademark so long as it holds that capability to distinguish the associated goods/services. Adding a domain suffix does not in itself turn a descriptive term into a distinctive term. Following the above examples, Chocolate.com.au for confectionery would still be presented with a report that the term Chocolate is too descriptive. We encourage registration of a full domain name only if you are using (or intending to use) that full domain as your trademark.
You will however be required to show you are also the registrant of that domain name (or authorised by the registrant to be registering a trademark that incorporates a domain name).
What are some examples of words you cant trademark?
Entirely descriptive words will not be registered as a trademarks. e.g. Chocolate for confectionary.
A trademark must also be rejected if because of something arising immediately from the trademark itself would deceive or cause confusion. For example, a famous person’s name or a domain name you do not hold.
Further, trademarks will be rejected if they are deemed scandalous. Scandalous marks are more than simply being not to everybody’s taste. For example, a mark such as “I DON’T GIVE A FLYING F@#%!” might not be to everyone’s taste but are not considered scandalous.
Scandalous marks requiring rejection are more likely to be:
- Marks that incorporate abuse towards a person
- Marks that incorporate abuse towards a particular racial or ethnic group
- Marks incorporating abuse towards a national flag
- Marks incorporating abuse towards a particular religion
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BIO:
Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.
Disclaimer – The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.