Last month, we kicked off an intellectual property series on various pieces of work you might not know can be  patented. This month, we’re expanding on this series with a look at words, designs, packaging and other things ideas you might not know are eligible for trademark protection. Trademarks represent a wide-reaching area of intellectual property law. Most businesses have an extensive trademark portfolio protecting various marks unique to the business, its products, and its services.

Know Your IP Part 2: Things You Might Not Know Can Be Trademarked

When it comes to protecting intellectual property, specifically patents, the role of a patent attorney is not just important, it’s indispensable.

Catherine Cavella, ESQ.

Expand your portfolio with protecting unique words, designs, and more.

Last month, we kicked off an intellectual property series on various pieces of work you might not know can be  patented. This month, we’re expanding on this series with a look at words, designs, packaging and other things ideas you might not know are eligible for trademark protection.

Trademarks represent a wide-reaching area of intellectual property law. Most businesses have an extensive trademark portfolio protecting various marks unique to the business, its products, and its services. But, could your trademark portfolio actually be more expansive and, in turn, each registration more strategic?

Some companies miss out on crucial value by having a few trademark registrations that attempt to cover too much ground without being refined or strategic enough to actually protect anything. It’s important to know what elements of your business are trademark-eligible to take advantage of the full value of an effective IP portfolio.

The name of the game is: Trademarks protect your branding. Do your customers recognize your products or services because of the icon on the app, the screen, or embroidered on the clothes, or the smell of the store, or the color of your packaging, or the unique shape of your packaging, or a particular sound or tune you use in advertising or delivering your service? If they do, then these are all trademarks belonging to your business.

Common Words and Phrases

You can’t trademark an apple, right? There are hundreds of millions of apple trees in the U.S., meaning just about anyone would have access to a tree full of apples… But, what about Apple?

Apple is a tech giant with a valuable portfolio of brands. For its main brand, it chose a common word having nothing to do with electronics. And we all learned that Apple (weird name for a tech company) makes electronics with a certain aesthetic and brand promise. Now we see an apple icon on a box and we immediately think of the brand. That’s the power of a trademark.

So does Apple Computer own the word Apple? Yes, for a broad range of consumer goods, they own the word, meaning nobody else can use it as a brand for their produce or service. But companies making and selling food can continue to use the word “apple” to describe their products. Common words and phrases can’t be registered if they are descriptive of the goods or services. So Apple is a strong trademark for electronics but cannot function as a trademark for apples. That means everyone in the apple business can use the word freely on their packaging and advertising.

Common phrases like “Have a Nice Day” cannot  function as trademarks either. In order to function as a trademark (and be eligible for trademark protection), a word or phrase must be non-descriptive of the goods or service, AND it must be perceived as a brand and not as mere information like “Made In USA” or a common claim like “Best Quality.”

Package and Product Shapes

Wendy’s square burgers. The Stanley tumbler design. The Heinz ketchup bottle.

We could go on, but each of these products and packages isn’t necessarily revolutionizing their industry so much as standing alone in the way they look. Just because your product is similar to others on the market doesn’t mean it has to share the same look. People are drawn to appealing visuals, and there are numerous examples of companies that broke into established markets by introducing similar products that simply looked different.

Packaging and product designs can be registered as trademarks (technically “trade dress”)  at the USPTO. They must be non-functional and perceived as trademarks. That means no competitor can copy the non-functional aspects of the packaging or product design. And because trademarks can be renewed forever, registered trade dress can be particularly valuable assets.

“I highly recommend Catherine Cavella, especially if you are looking to file a trademark and understand copyright law. She is incredibly knowledgeable and dependable. I am very grateful for her help achieving my business goals during my book publication process. I will definitely use her services again!”

Marie Thresher

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Storefront Design and Internal Store Design

Circling back to the Apple example from above, you’ve likely been inside or at least passed by an Apple store. They look nothing like other stores. They’re known for the very open space with limited clutter and tables strategically aligned in a rectangular pattern.

Image Source: U.S. Patent and Trademark Office

The tech giant secured a trademark for its stores’ “distinctive design and layout”, similar to what other companies have done with their storefronts and design. This showcases just how deep successful companies look to protect their uniqueness with trademark registration. They want every element of the Apple experience to be distinctive, trademarked, and true to their brand.

Sounds

You’re watching your favorite ‘70s sci-fi flick. There’s a shootout in a bright white spaceship hallway when suddenly out of the madness comes a masked and cloaked figure and that unmistakable breathing. Enter Darth Vader.

Vader’s breathing as he lurks around the Star Wars franchise is one of the most recognizable villain indicators in any film, and yup, you guessed it, it’s trademarked. Lucasfilm registered Vader’s famous breathing sound with the USPTO  as a sensory mark.

Sounds, colors, even smells (Disney is known for this one) are trademarkable sensory experiences that savvy businesses have trademarked over the years to ensure their competitors cannot deliver an equivalent experience to you. Nobody hears a heavy, mechanical breath without thinking of Darth Vader.

Know Your Trademark Rights with IP Works Law

At IP Works Law, our experienced trademark attorneys understand the extensive scope and power of strategic trademark registrations. We regularly work directly with our clients, helping them to secure the necessary protection for their branding, innovations and ideas, ensuring they are able to stand out from the competition. Let us help you turn your creativity into exclusive, protected intellectual property. Contact IP Works Law to POWER YOUR IDEAS®.

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Catherine Cavella

Since 1992, Catherine Cavella, Esq. Her focus on Trademark Law and Copyright Law for the last few decades gives her deep insights into the fundamental principles behind the rules. Catherine regularly writes about new developments in trademark law, copyright law, and internet law.

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