The Gordian Team
Can we trademark generic words like "LOVE" and "THE"?
Recently, the decision of the UK Intelectual Property Office to allow the registration of the word "Cariad" (Welsh for "love") as a trademark for candles has been widely criticised as this may prevent other businesses from using a relatively generic term on their products. Across the pond, the Ohio State University successfully registered the word “THE” in the United States for t-shirts, baseball caps and hats. In 2020, the US Supreme Court decided that a relatively generic domain name - "Booking.com" can be trademarked. And in Malaysia, local celebrity Neelofa's mum landed in hot soup when she attempted to register "Harimau Menangis" (a common Thai dish) as a trademark.
With businesses hellbent on registering every available word in our lexicon as a trademark, are we not in danger of running out of words to use?
Well, while the above examples are somewhat worrying, cases like this are relatively rare. In fact, numerous attempts to register generic words/phrases as trademarks have failed, e.g. Subway's failed attempts to trademark the word "footlong"; the former POTUS's attempt to trademark the phrase "you're fired".
Generally, you can’t register a generic/descriptive word as a trademark. That is unless you have used your trademark so extensively that when consumers only associate the said generic/descriptive word with your brand (e.g. Body Shop, Kentucky Fried Chicken, The Weather Channel). The reason is simple. Registration gives you exclusive right (monopoly) to use the trademark, and if you are allowed to register a generic/descriptive sign, no one else can use it! Imagine if I register the word “restaurant” as a trademark for restaurant services, no one can use that word to describe their f&b outlet without infringing my trademark rights. Accordingly, the more generic/descriptive a trademark, the harder it is to register.
For example, it took Booking.com 8 years and numerous appeals to get their trademark registered. Ohio State University's registration of the word "THE" took close to 4 years, and Neelofa's mum had to withdraw her trademark application following public outcry.
On the other hand, brands which are invented, arbitrary, or fanciful are comparatively easier to register as trade marks and don’t rely so much on consumer recognition in order to be registrable.