What Can Be Trademarked – Understanding the Scope of Trademark Protection

Trademarks play a vital role in protecting the distinctive elements of a brand, providing legal rights and exclusivity to the owner. While many people associate trademarks with logos and brand names, the scope of what can be trademarked extends beyond those elements. In this article, we will explore the wide range of assets that can be trademarked, shedding light on the various categories and examples of protectable trademarks. Understanding what can be trademarked is essential for businesses and individuals seeking to secure their intellectual property and build strong brand recognition in the marketplace.


The Basics of Trademarks

Before diving into the specific items that can be trademarked, it’s important to grasp the fundamental principles of trademarks. A trademark is a form of intellectual property protection that grants exclusive rights to use a distinctive sign, symbol, word, phrase, design, or combination thereof to identify and distinguish goods or services from those of others. The purpose of a trademark is to prevent confusion among consumers and to safeguard the reputation and goodwill associated with a brand.


Trademarkable Categories and Examples

Trademarks can encompass various categories of assets. Here are some examples:

  1. Brand Names and Logos: This is perhaps the most common form of trademark. Brand names like Coca-Cola and logos like the Nike Swoosh are iconic trademarks that instantly evoke specific companies and their products.
  2. Slogans and Taglines: Memorable and catchy phrases can also be trademarked. Examples include Nike’s “Just Do It,” McDonald’s “I’m Lovin’ It,” and Apple’s “Think Different.” These slogans help create brand associations and recognition.
  3. Product Packaging: Distinctive packaging designs, such as the Coca-Cola bottle shape or the Toblerone chocolate triangular packaging, can serve as trademarks. They contribute to brand recognition and act as identifiers of the product’s source.
  4. Sound Marks: Unique sound sequences or jingles that are used to identify a brand can be registered as sound trademarks. For instance, the NBC chimes or the Intel jingle are notable sound trademarks.
  5. Colors and Color Combinations: In some cases, specific colors or color combinations can be trademarked when they have become closely associated with a particular brand. Examples include Tiffany & Co.’s signature robin’s-egg blue and the red soles of Christian Louboutin shoes.
  6. Motion Marks: Animated or moving images, such as the MGM lion roaring or the Netflix intro animation, can be registered as trademarks.
  7. Fragrances: While challenging to register due to their intangible nature, unique scents associated with specific products, like the floral scent of Chanel No. 5 perfume, can potentially be protected as trademarks.
  8. Trade Dress: Trade dress refers to the overall appearance and image of a product or its packaging that distinguishes it from others in the market. Examples include the distinctive shape of a Coca-Cola bottle or the design of the Apple iPhone.


Criteria for Trademarkability

To be eligible for trademark protection, an asset must meet certain criteria:

  1. Distinctiveness: The asset should be distinctive and capable of identifying the source of the goods or services. Generic or descriptive terms generally cannot be trademarked unless they acquire secondary meaning.
  2. Non-functional: The asset should not serve a purely functional purpose. Trademarks are intended to identify and distinguish, not to monopolize functional features.
  3. Not Confusingly Similar: The asset should not be confusingly similar to an existing registered trademark. It should not create a likelihood of confusion among consumers regarding the source of goods or services.
  4. Not Offensive or Prohibited: Trademarks that are offensive, immoral, deceptive, or against public policy may be refused registration.


The Trademark Registration Process

To protect a trademark, it’s important to go through the registration process. The process generally involves:

  1. Trademark Search: Conducting a comprehensive search to ensure that the proposed mark is not already in use or similar to an existing registered mark. This minimizes the risk of facing opposition during the registration process.
  2. Application Filing: Preparing and filing a trademark application with the appropriate intellectual property office, such as the United States Patent and Trademark Office (USPTO) or the European Union Intellectual Property Office (EUIPO). The application includes details about the mark, its classification, and the goods or services associated with it.
  3. Examination and Publication: The trademark office examines the application to ensure compliance with formalities and substantive requirements. If the mark meets the criteria, it is published in an official gazette or database for public notice and potential opposition by third parties.
  4. Opposition Period: During a specific period after publication, other parties can oppose the trademark registration if they believe it infringes on their existing rights. If no oppositions are filed or successfully overcome, the mark proceeds to registration.
  5. Registration and Maintenance: If the mark successfully completes the registration process, a certificate of registration is issued. Trademark registrations usually last for a specific period, typically ten years, and can be renewed indefinitely as long as the mark is in use and the renewal fees are paid.



Understanding what can be trademarked is crucial for protecting your brand assets and maintaining a distinct identity in the marketplace. From brand names and logos to slogans, packaging, and even fragrances, the range of trademarkable items is broad. By navigating the trademark registration process and adhering to the criteria for trademarkability, individuals and businesses can secure their intellectual property rights, prevent confusion among consumers, and build strong brand recognition that sets them apart from competitors. Consulting with a trademark attorney can provide invaluable guidance and support throughout the process, ensuring the best possible protection for your valuable brand assets.