Can a Word Be Registered as a Trademark?

If you are just starting out in business and looking to take the smart option of protecting your brand and intellectual property so as to prevent somebody trying to copy or infringe on your rights, you may be unaware of what to choose as your mark. There is often a lot of confusion and misinformation surrounding the registration of names and simple phrases as trademarks.

The team at Mark My Words has been helping businesses – large and small – to successfully register their trademarks for many years. We understand that your primary focus is on the day to day running of your business and don’t want to be bogged down with the complexities of intellectual property protection. We provide independent and practical advice surrounding all aspects of trademark registration – including what and what cannot be registered as a trademark.

Can I Register a Trademark for a Word?

It is possible to register a trademark for a word on the proviso that it meets the definition of a trademark – being a sign that you use to distinguish your products/services from the similar goods/services of others in the marketplace. What this means is that the word cannot be too generic, descriptive or likely to be genuinely needed by others, and cannot be seen as conflicting with any earlier filed trademarks in Australia. A single word can meet this requirement. For example, “Apple” is a single word, and acceptable to be registered as a trademark in relation to computer products as well as a range of services and products offered under this trademark.

What About Registering a Trademark on my Own Name?

It is entirely possible to register a trademark for your own name as long as it meets the above-mentioned definition and general requirements stipulated by IP Australia pertaining to trademark registration. It is worth noting that common names for common goods/services can be challenging. Examiners at IP Australia may conclude the name you want is not capable of functioning as a trademark, because others with that same common name are likely to need to use it for those same sorts of goods/services. There are, at times, ways to overcome this but you would be encouraged to seek professional guidance from a trademarks expert on such matters.

Furthermore, if you happen to share the same name with a famous or well-known person, more objections might arise. The examiners may determine that use of the name is likely to mislead consumers into believing your products/services are endorsed by or affiliated with that famous person that shares your name and a report would be issued advising you that the mark cannot be registered. The possibility of addressing this issue would be to obtain consent from the well-known person or celebrity to provide their permission to use their name in the trademark. Again, this would best handled with the assistance of a trademarks attorney.

Can I Register a Trademark for a Descriptive Word – such as “Chocolate”?

Trademarks are registered in relation to goods/services they are used to identify so it is possible to register common words but not necessarily for their common goods.

The word chocolate, if filed in relation to chocolate and confectionery goods would not be approved as it is too descriptive. However, if chocolate was applied for in relation to financial services for example, it may be accepted on the basis that it’s not the common name normally used to describe financial services. Ultimately, this comes down to whether other people would likely need to use the same word in connection with the same goods/services. Others would have genuine need to use the word Chocolate for confectionery products but would not need to use Chocolate as a description or brand of a financial services.

Apple is a great example of a common word as a trademark. Because it is used as a trademark for computers and related goods/services it is acceptable for registration. That would not be possible if filed in connection with fruit.

Can I Register a Trademark for a Domain Name?

If your domain name in question is able to distinguish the associated products/services, it is possible to register a domain name as a trademark. It still cannot be a generic or descriptive term and adding a domain suffix will not alter that. At Mark My Words, we encourage registration of a full domain name only if you are using (or intending to use) that full domain as your trademark. You will, however, be required to prove you are also the registrant of that domain name – or have authorisation by the registrant to be registering a trademark that incorporates that domain name.

What Are Some Examples of Words You Can’t Register as Trademarks?

Words which are completely descriptive will not be registered as trademarks. For instance, apple for fruit or chocolate for confectionery. Anything likely to cause confusion or deception in the marketplace will also be rejected as a trademark. For example, the name of a famous person or a domain name you do not own or have permission to use.

Any name deemed scandalous would also be rejected. Scandalous marks equate to being more than simply being off-putting to some. For example, a mark such as “I DON’T GIVE A FLYING F@#%!” might be off-putting to some people but it would not be categorised as scandalous.

Scandalous marks that would be rejected include:

Marks incorporating abuse towards a national flag
Marks that incorporate abuse towards a person
Marks incorporating abuse towards a particular religion
Marks that incorporate abuse towards a particular racial or ethnic group

Work with Us

When you start a new business venture it is very easy to get swamped in all the daily details of keeping things running smoothly. Having us help you in the process of registering your trademarks and brands allows you to focus on your business without worrying about this side. Mark My Words have been helping all kinds of businesses register their trademarks successfully for many years, and we have the experience and expertise to be able to help you.

Call Mark My Words to discuss registering your trademark today.

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.