Follow Russell Linkedin Twitter Facebook
Email Russell Email
Legal Issues
Mar 18, 2019

How Can You Protect Your Brand Name When You Can’t Protect the Words?

Sponsored Content provided by Russell Nugent - Attorney, The Humphries Law Firm

A trademark is any device that is used by a person or business to identify and distinguish their goods from the goods offered by other people or businesses.  The most commonly registered trademarks are words and phrases. 

However, sometimes words and phrases are not sufficiently distinctive enough to function as trademarks. For instance, generic terms for certain products or services cannot function as trademarks.  One could not register “LAW FIRM” for a law firm, as that term needs to be free for others in the field to use to identify what service they provide. 

In addition, words that merely describe a quality, characteristic or ingredient of the product they identify generally do not function as trademarks. For example, the term “APPLE” was denied registration for apple-scented potpourri. In addition, marks that primarily refer to a location are denied registration as trademarks. The terms “BANKS CHANNEL” and “CAPE FEAR” are examples of terms that specifically identify certain locations in Southeastern North Carolina. There are a number of categories of words and phrases that are not considered distinctive enough to serve as trademarks. 

However, trademark owners can protect other aspects of otherwise unprotectable words or phrases. For example, the phrase “Construct-A-Closet” was registered in a class for “components used to construct personal storage systems” in the following format:



A court decided that the words described the applicant’s goods and thus could not be registered, but that the tube-like shape of the two letter “Cs” created a commercial impression separate from the words themselves and could be registered.

Other examples of word marks that were registered even though the words themselves were not registrable are:

           
 
The first mark has a color scheme and the outlines of two children making up the letter “I” that create a separate commercial impression from the word “KIDS.”

Similarly, the second mark creates the impression of a phrase – “ASK ALASKA” – out of the single word, “ALASKA.”

And the positioning and capitalization of the letters “J” and “H” in the third mark stand apart from the words “JACKSON HOLE.”  All these trademarks contain protectable design elements separate from the words themselves. 

As a result, all is not lost if your trademark consists only of words that cannot be protected or registered.  Depending on how the wording in a trademark appears, there may still be some protection given to trademarks that are otherwise unprotectable. Knowledgeable trademark applicants can find interesting ways to protect a trademark.

Russell is a native of Wilmington, N.C. and has been practicing law in Eastern N.C. since 2004. Prior to that, he worked in Chapel Hill and Durham as a research technician on teams exploring RNA-based gene therapies, viral fusion inhibitors, and the role Galactocerebroside plays in protein localization near nodes of Ranvier. After passing the patent bar in 2003 and becoming a registered patent agent, Russell received his law degree from Georgetown in 2004. He began his legal career representing clients in personal injury matters but later left personal injury to provide patent prosecution services to law firms in China and Taiwan prior to joining The Humphries Law Firm in 2014. Russell helps individuals and businesses protect their innovations, creations and business information using strategies based in patent, trademark, copyright and trade secret law. His work includes both strategic planning and dispute resolution. He assists clients who want to buy and sell businesses, and license or transfer their intellectual property assets. Russell also assists with the firm’s litigation practice, particularly in insurance and employment disputes.

Humphries 18blk nov
Ico insights

INSIGHTS

SPONSORS' CONTENT
Alyce 4 april242017

Instead of Isolation or Institution, a Third Approach to Senior Housing

Alyce Phillips - Old North State Trust LLC
Aaeaaqaaaaaaaaidaaaajdhiztrkodm0lte2yjetngrkmy1hotrmltawmdvlmwqyztmymw

Growing the Spirit of Entrepreneurship

Diane Durance - UNCW Center for Innovation and Entrepreneurship
Burrus rob headshot 300x300

Forecasting the Future: Demystifying Two Common Assumptions in Our Economy

Robert Burrus - Cameron School of Business - UNC-Wilmington

Trending News

Realtor Submits Site Plans For Luxury Condos, Executive Office Center

Cece Nunn - Aug 22, 2019

Firm's Expansion Expected To Lead To New CRO Jobs In Wilmington

Cece Nunn - Aug 22, 2019

SummerFest 19 To Include Street Food Cook-off At Battleship Park

Jessica Maurer - Aug 21, 2019

Timeline In Motion For Castle St. Redevelopment Project

Christina Haley O'Neal - Aug 21, 2019

Drift Coffee  & Kitchen Now Open At Mayfaire 

Jessica Maurer - Aug 21, 2019

In The Current Issue

Battleship Opens New Tour Section With Food Focus

An area landmark has a new tool for providing insight into the daily lives of the men who served aboard the World War II vessel....


Info Junkie: Girard Newkirk

CEO & Founder of KWHCoin, Girard Newkirk shares his top tech and informational tools....


Advocating For Realtors

Anne Gardner, the new CEO of Cape Fear Realtors, talks about her role leading one of the region's largest trade associations....

Book On Business

The 2019 WilmingtonBiz: Book on Business is an annual publication showcasing the Wilmington region as a center of business.

Order Your Copy Today!


Galleries

Videos

WILMA's Leadership Accelerator
Power Breakfast - The H Word (June 13, 2019)
2019 WilmingtonBiz Expo Keynote Lunch - CEO, nCino, Pierre Naude`