trademark
Can you trademark a word in a dictionary?
<p>Can you trademark a word in a dictionary?</p>
<p><a href="https://www.theverge.com/2013/7/31/4574878/microsoft-skydrive-name-change-bskyb" rel="nofollow noreferrer">https://www.theverge.com/2013/7/31/4574878/microsoft-skydrive-name-change-bskyb</a></p>
<p>Sky trademarked the word Sky, so I am wondering if words such as Tornado, Banner and Diesel could also be trademarked. Someone said to me. We can't, but Microsoft had to change Skydrive to OneDrive due to Sky. The fact that the British Sky Broadcasting Group owns the word Sky sounds ludicrous to me.</p>

<p>Yes, but...</p>
<p>Trademarks generally have a particular class of goods or services they apply to.  For a common word such as &quot;sky&quot;, a trademark will only be granted for a very narrow set; there's no chance of getting an &quot;all purposes&quot; trademark like you could for a made-up word.</p>
<p>For example, VuongGiaNghi Nguyen holds a trademark to &quot;Sky&quot; in the United States when describing &quot;Eyelash Glue, Eyelash Extension Glue, False eyelashes, False eyelash perm kit, Lash Extensions&quot;, while Strange Loop, LLC, holds a trademark to it when describing &quot;Downloadable software featuring conversational agents to facilitate communication between humans and machines in an electronic messaging platform for use in the healthcare and medical fields&quot;.</p>
<p>I'm guessing that British Sky Broadcasting's trademark has a &quot;goods and services&quot; that overlaps or is very similar to Microsoft's use of &quot;sky&quot;.</p>

<p>Trademarks can be held on dictionary words, shapes, colours, even scents; but they do not grant an absolute monopoly over that thing. They apply only:</p>
<ul>
<li>Within a defined class of goods or services</li>
<li>When actively defended</li>
<li>When a court judges that there was either deliberate &quot;passing off&quot;, or a reasonable chance of confusion</li>
</ul>
<p>This <a href="https://www.bbc.co.uk/news/technology-23530337" rel="nofollow noreferrer">BBC News article about the SkyDrive case</a> has a rather better explanation than most:</p>
<blockquote>
<p>Although BSkyB ended its Store &amp; Share cloud storage service at the end of 2011, it had argued that Microsoft's use of the word &quot;sky&quot; in its brand posed a problem since it still ran other digital services including its Sky Broadband and Sky Go video streaming products.</p>
<p>In her ruling, the judge noted that customers having problems with Microsoft's product had ended up calling the broadcaster's helpline in the mistaken belief it was responsible for the service.</p>
</blockquote>
<p>So, all three things came into play here:</p>
<ul>
<li>Sky had a claim to the trademark <em>in a relevant class of products</em></li>
<li>They actively defended the trademark by taking Microsoft to court</li>
<li>Microsoft defended the case, but the judge ruled that there was scope for confusion</li>
</ul>
<p>Like a lot of things in law, this is all much less &quot;black and white&quot; than many people believe, and there is often room for debate and bargaining. Another famous case is <a href="https://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer" rel="nofollow noreferrer">Apple vs Apple</a>, which went on for decades, with multiple rulings and settlements.</p>

<h2><a href="https://www.trademarksonline.com.au/trademark-questions?utm_source=adwords&amp;utm_campaign=&amp;utm_medium=ppc&amp;utm_term=ip%20australia%20trademark&amp;hsa_src=g&amp;hsa_net=adwords&amp;hsa_ad=559804414059&amp;hsa_tgt=kwd-2415827831&amp;hsa_grp=129900918695&amp;hsa_kw=ip%20australia%20trademark&amp;hsa_acc=3189120477&amp;hsa_cam=795220767&amp;hsa_mt=e&amp;hsa_ver=3&amp;utm_source=adwords&amp;utm_campaign=Trademarksonline.com.au&amp;utm_medium=ppc&amp;utm_term=ip%20australia%20trademark&amp;hsa_src=g&amp;hsa_net=adwords&amp;hsa_ad=559804414059&amp;hsa_tgt=kwd-2415827831&amp;hsa_grp=129900918695&amp;hsa_kw=ip%20australia%20trademark&amp;hsa_acc=3189120477&amp;hsa_cam=795220767&amp;hsa_mt=e&amp;hsa_ver=3&amp;gclid=EAIaIQobChMI5r2_4r-j9QIVo5NmAh3ODQQ4EAAYASADEgJuDfD_BwE" rel="nofollow noreferrer">Yes</a></h2>
<blockquote>
<p>Frequently referred to as a ‘badge of origin’, a trademark is a distinctive sign - usually a word or a symbol - that distinguishes your goods and services in the marketplace and helps consumers to identify them.</p>
</blockquote>
<p>Prominent trademarks that are dictionary words are Windows, Apple, Puma, (Ford) Focus, (Ford) Falcon, (Toyota) Sequoia, (Toyota) Highlander, (Unilever) Surf, (Unilever) Tide etc.</p>
<p>In general, the word must not be generic to that industry. So you can trademark “Car” as a movie studio but not as an automobile brand and probably not as a transport or logistics brand.</p>

<p>Diesel, one of the examples in your question, has been an Italian clothing brand for decades. It's also the name of a couple of bands, couple of films, a game engine, a surname and the name of a military operation in 2009.</p>
<p>Tornado, another one of your examples, is a <a href="https://en.wikipedia.org/wiki/Tornado,_West_Virginia" rel="nofollow noreferrer">community in West Virginia</a>, the name of many amusement rides, the name of Zorro's horse, the name of multiple films, songs and games, the name of a clothing retailer, a Python webserver, a HTC phone, a couple of sports clubs and multiple military weaponsystems.</p>
<p>According to the <a href="https://www.uspto.gov/trademarks/basics/what-trademark" rel="nofollow noreferrer">United States Patent and Trademark Office (USPTO)</a>:</p>
<blockquote>
<p>A <strong>trademark</strong> can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.</p>
</blockquote>
<blockquote>
<p>You become a <strong>trademark owner</strong> as soon as you start using your <strong>trademark</strong> with your goods or services. You establish rights in your <strong>trademark</strong> by using it, but those rights are limited, and they only apply to the geographic area in which you’re providing your goods or services. If you want stronger, nationwide rights, you’ll need to apply to register your <strong>trademark</strong> with us.</p>
</blockquote>
<p>Emphasis mine.</p>
<p>If you're referring to a Diesel t-shirt, customers will recognize it. If you're referring to a Tornado shop in Japan, customers will recognize it.</p>
<p>Can an everyday word be trademarked? Clearly. Whether that has the actual effect that you think a trademark has, is another question.</p>
