Skyline photo of Manhattan, NY
Pedestrians and bicyclist crossing Brooklyn bridge
everyday people crossing at intersection in NYC
street scene of NYC with bicycle delivery person in foreground
NY Skyline at dusk
April 12, 2023

Legal News

April 12, 2023

Trademark Rules in the Us: What Can and Cannot be Trademarked

Trademarks protect businesses' intellectual property rights by distinguishing their goods or services from others. As demonstrated by a recent case involving Sweetgreen and Chipotle Mexican Grill, registering a trademark protects a brand's image and prevents competitors from using similar marks that may confuse consumers.

Chipotle filed a lawsuit against Sweetgreen, claiming that its "Chipotle Chicken Burrito Bowl" infringed on Chipotle's trademark. In response, Sweetgreen renamed the dish to "Chicken + Chipotle Pepper Bowl," resolving the lawsuit amicably.

What Can Be Generally Trademarked

  1. Names: Unique and non-generic brand, company, or product names.
  2. Logos and symbols: Distinctive logos and symbols representing a company or product.
  3. Slogans and taglines: Catchy phrases identifying a brand or product.
  4. Packaging and product design: Distinctive packaging or product designs serving as a source identifier.

What Cannot Be Trademarked

  1. Generic terms: Words or phrases considered generic.
  2. Descriptive terms: Terms describing a product or service without distinctiveness, unless they acquire a secondary meaning.
  3. Surnames: Surnames, unless they have acquired distinctiveness.
  4. Functional features: Essential product features related to its function or purpose.

Understanding trademark rules is vital for businesses aiming to protect their intellectual property and maintain a strong brand identity. The Sweetgreen and Chipotle dispute highlights the importance of carefully selecting names, logos, and other elements to avoid legal issues. By knowing what can and cannot be trademarked, businesses can make informed decisions and protect their valuable assets.

The attorneys at Outside Legal Counsel LLP are proficient in helping clients undertake such an analysis.  

This is not legal advice and is attorney advertising.

back to news

Disclaimer: Nothing on this website is or should be construed as legal advice. An attorney-client relationship does not exist with our firm unless a signed retainer agreement is executed, and we do not offer legal advice through this site or any of the content located on it. For legal advice for your particular circumstances, please contact us directly.