You want your company to stand out, and for that reason, you have carefully created a series of trademarks that differentiates your brand and offerings in your business space. If you haven’t already, you should participate in trademark registration for your business name and logo. You might also trademark any slogans your business uses in its marketing or any unique shapes involved in product packaging.
However, as tempting as it might be to protect all aspects of your brand, you should recognize that not everything can be trademarked. Here are a few examples of famously rejected trademarks — and why they didn’t merit USTPO protection — so you can avoid wasting your time and energy on futile trademark applications.
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The Word “The”
“The” is one of the most important function words in the English language. It has been integral in communicating since people were speaking Old English, around 950 CE. And yet, in 2019, Ohio State University attempted to trademark the word “the,” preventing other businesses from using it in their promotional materials. The USTPO rejected the application — at first. After multiple appeals, in which OSU demonstrated that “the” had a secondary meaning when used on their sports and collegiate apparel, the USTPO granted the trademark, meaning that Ohio State is the only business that can use “the” on sports-related merchandise.
Moral of the story: You might take this lesson one of two ways: Don’t try to trademark such general words, or harass the USTPO until you can get what you want.
The Sound of a Motorcycle
Most trademarks are visual, like text or logos, but in truth, any sensation can be trademarked — which is why Harley Davidson sought to trademark the sound of a motorcycle in 1994. Indeed, Harleys are known for their roaring engines, but the USTPO rejected the company’s applications again and again, arguing that the rumbling engine noise was not distinguishable from sounds produced by other motorcycle brands. Harley-Davidson eventually dropped heir claim, and today, only 23 trademarks have been issued to sounds.
Moral of the story: If you want an unconventional trademark like a sound, you will need to work harder to demonstrate its uniqueness to your brand,
The Smell of Strawberries
In 2005, a French company called Eden Sarl petitioned the European Union’s trademark agency to trademark the smell of strawberries, hoping to corner the market on strawberry-scented soaps, face creams, stationery, clothing and more. However, the agency rejected their application for a simple reason: strawberries don’t have just one scent. Despite appeals to the highest court, Eden Sarl was unable to trademark a strawberry’s scent, which is unfortunate considering the fruit’s unmitigated popularity in 2023.
Moral of the story: When you apply for a trademark, you need to be careful to define exactly what you are trademarking, especially if there is more than one variation on your idea.
The Carlton
In “The Fresh Prince of Bel-Air,” Carlton Banks performs an exuberant, Tom Jones–inspired dance that almost immediately became a phenomenon. So, when video game Fortnite recreated the dance as downloadable content for players, actor Alfonso Ribeiro, who originated the dance, applied for a trademark to challenge Fortnite’s usage and take licensing fees. Unfortunately, the USTPO declined Ribeiro’s application, claiming that the dance wasn’t distinctive enough to qualify as a choreographic work.
Moral of the story: You need to apply for trademarks before they become culturally important and before other entities seek to use them, especially if they are simple.
The Yellow Smiley Face
The first-ever yellow smiley face was created in 1963 by a graphic designer hired to make a morale-boosting symbol for an insurance company’s workforce. The graphic designer worked on the face for all of 10 minutes and was paid $45 — and the smiley face became an international icon. In the 1990s, retail giant Walmart began using the friendly yellow face on its signs and uniforms. The design was so popular amongst customers that Walmart pursued a trademark, fighting another company for the exclusive right to use the yellow smiley. For 15 years, battle raged over the yellow smiley face, and eventually, the dispute settled with Walmart gaining ownership only over their specific smiley face design.
Moral of the story: You may need to adjust your trademark design to make it different from other existing trademarks.
Your company needs to register its trademarks to protect its brand. However, before you submit an application, you should do your research to ensure that you won’t make the same mistakes as the businesses above.
Frequently Asked Questions (FAQs) about Trademark Registration and Protection
What is the importance of trademark registration for my business name and logo?
Trademark registration is crucial for your business name and logo as it offers legal protection and exclusive rights to use them in your industry. By registering your trademarks, you can prevent others from using similar names or logos that may cause confusion among your customers. It helps build brand recognition and trust, allowing your company to stand out in the competitive market.
Can I trademark slogans used in my business marketing?
Yes, you can trademark slogans used in your business marketing. Slogans that are distinctive, creative, and not descriptive of common terms or phrases are eligible for trademark protection. Registering your catchy slogans gives you the advantage of safeguarding your unique marketing messages and ensures that competitors don’t use similar phrases to capitalize on your brand’s success.
How can I protect unique shapes involved in my product packaging through trademarks?
Protecting unique shapes in your product packaging involves applying for trade dress protection. Trade dress refers to the visual appearance of your product’s packaging or design that identifies the source of the product. To obtain trade dress protection, the shape must be distinctive and serve as a source identifier. Registering it as a trademark with the U.S. Patent and Trademark Office (USTPO) helps safeguard your packaging design from imitation and counterfeiting.
What are some examples of famous trademark applications that got rejected?
Some famous trademark applications that faced rejection include Ohio State University’s attempt to trademark the word “the,” Harley Davidson’s application to trademark the sound of a motorcycle, and Eden Sarl’s bid to trademark the smell of strawberries. These cases demonstrate the challenges in obtaining trademark protection for certain elements and the importance of carefully defining and proving the uniqueness of your trademark during the application process.
How did Ohio State University eventually obtain the trademark for the word “the”?
Protecting unique shapes in your product packaging involves applying for trade dress protection. Trade dress refers to the visual appearance of your product’s packaging or design that identifies the source of the product. To obtain trade dress protection, the shape must be distinctive and serve as a source identifier. Registering it as a trademark with the U.S. Patent and Trademark Office (USTPO) helps safeguard your packaging design from imitation and counterfeiting.
What are some examples of famous trademark applications that got rejected?
Some famous trademark applications that faced rejection include Ohio State University’s attempt to trademark the word “the,” Harley Davidson’s application to trademark the sound of a motorcycle, and Eden Sarl’s bid to trademark the smell of strawberries. These cases demonstrate the challenges in obtaining trademark protection for certain elements and the importance of carefully defining and proving the uniqueness of your trademark during the application process.
How did Ohio State University eventually obtain the trademark for the word “the”?
Ohio State University’s application to trademark the word “the” was initially rejected by the USTPO. However, through multiple appeals, the university demonstrated that “the” had a secondary meaning when used on their sports and collegiate apparel, indicating a connection to the university’s brand. After providing sufficient evidence, the USTPO granted the trademark, allowing Ohio State to exclusively use “the” on sports-related merchandise.
Why did the USTPO reject Harley Davidson’s application to trademark the sound of a motorcycle?
The USTPO rejected Harley Davidson’s application to trademark the sound of a motorcycle because it lacked distinctiveness. The sound of a rumbling engine, while iconic for Harleys, was not unique to their brand and could not be easily distinguished from sounds produced by other motorcycle brands. Trademark protection requires a mark to be inherently distinctive or acquire distinctiveness through extensive use, which Harley Davidson couldn’t establish for their sound.
What was the issue with Eden Sarl’s attempt to trademark the smell of strawberries?
Eden Sarl’s attempt to trademark the smell of strawberries faced a significant challenge—the scent of strawberries is not uniform and can vary significantly. The European Union’s trademark agency rejected their application, arguing that a scent cannot be easily defined and doesn’t serve as a reliable source identifier. Trademarks must be clear and distinct, making it difficult to register a trademark for scents that lack consistent and recognizable characteristics.
Why did the USTPO decline Alfonso Ribeiro’s application for “The Carlton” dance trademark?
The USTPO declined Alfonso Ribeiro’s application for “The Carlton” dance trademark because they considered the dance routine not distinctive enough to qualify as a choreographic work deserving of trademark protection. To be eligible for trademark registration, a dance or choreography must be highly unique and strongly associated with the individual or brand seeking the protection, which the Carlton dance failed to demonstrate.
How did Walmart resolve the dispute over the yellow smiley face trademark?
Walmart’s dispute over the yellow smiley face trademark lasted for 15 years. Eventually, the dispute was settled, and Walmart gained ownership of their specific smiley face design. The settlement likely required Walmart to modify their smiley face design to make it sufficiently different from other existing trademarks. This resolution allowed Walmart to exclusively use their distinctive version of the yellow smiley face in their branding.
What should I consider when applying for a trademark to avoid making the same mistakes as others?
When applying for a trademark, it’s essential to carefully consider a few key aspects to avoid common mistakes. Firstly, conduct thorough research to ensure that your proposed trademark is unique and doesn’t infringe on existing trademarks. Define precisely what you want to protect, as generic or descriptive terms may be rejected. Additionally, provide evidence to demonstrate the distinctiveness and association of your trademark with your brand. Seeking legal guidance and understanding the specific requirements of the trademark office can also improve your chances of successful registration.