There are a few things that cannot be protected under trademark law. What can be protected is anything that indicates the source of a business’ products or services. That could be a name, it could be a logo, it could be a slogan, it could even be a sound, or another type of non traditional mark.
But not everything can be protected or registered. The main thing that cannot be protected is, a generic name, a generic term. So if I was to open a new restaurant and call it, “The Donut Shop,” there’s nothing unique, there’s nothing protect-able, it’s obviously apparent, on its face, what I sell. And there’s nothing, probably, that could be protected about that name.
The other type of things that cannot be protected are things that aren’t used to indicate the source. So what I mean by that is, if they are merely providing information, or they, under trademark law, what’s called, “fail to function” as a mark. And we are seeing, in just the last year or two, an increase in the number of refusals due to that. So, for example, if you use a slogan that is made up of very common words in your industry, you may not be able to protect it. If you use something that’s merely informational, even if you incorporate it into a logo or a slogan, it may not be protect-able. An example of that would be, if you have a restaurant, to go back to a restaurant example, “Happy Hour Every Day From Noon to Sunset.”
Maybe the phase is original, maybe nobody else has happy hour during those hours. But, because consumers wouldn’t look at that and think that it was telling them something about the source of the services or the brand, they would look at it and think it was just telling them something informational about the services, it’s not functioning as a trademark. Other examples along these lines would be information about “lowest price guaranteed”, or “satisfied guaranteed” – nobody can protect that phrase, it’s not indicating the source of the goods or services.
So while many, many, many tools used by brands can be registered, and should be registered and protected, you do want to be on the lookout for those things where they can’t be protected. And then it might be a waste of money to file and try to register them.
