Meghan Markle and the Archetypes Trade Mark – or what you can and cannot trade mark

I was browsing social media during my commute, happily listening to a Harry Potter audio book, when I spotted an article about Meghan Markle. Usually I skip over the gossip about the former Suits actress, but this one caught my attention.

The Duchess of Sussex, who currently lives in America, has attempted to trade mark the word ‘Archetypes’ in the US. If you, like me, were curious why this was big news you will have seen that she has drawn criticism for this move, with many commenting that she is trying to trade mark a 476 year old word (how dare she!).

I had to stop the audiobook and check out why, out of all this non-news, so many people were shocked by Meghan’s actions. After all, there is nothing to stop Meghan applying for this trade mark, at least not in UK law.

There are already so many trade marks out there that use common words including ‘Apple’, the creators of the iPhone, and ‘Amazon’ is a trade mark despite also being the name of a large rainforest in South America, and Facebook have just rebranded as ‘Meta’ which is a pre-fix originating from Ancient Greek.

After reading through the comments on some of the articles, it became clear that one of the reasons for this common business practice hitting the news (apart from journalists wanting to talk about Meghan Markle) is because some people don’t understand what can and can’t be a trade mark.

So… what can you trade mark?

There are a few key points to bear in mind when you are thinking up new brand name – it’s especially important to get this right before you go through the trouble of applying for a UK trade mark and risk losing your application fees.

· For obvious reason, you cannot trade mark any offensive words or marks. You can certainly try, but these would be rejected by the registrar before they were ever published on the trade mark register!

· Trade marks have to be capable of being entered into the trade mark register, or in other words, of being “represented graphically”. A trade mark could be words, logos, shapes, sounds, colours, or smells – but shapes, sounds, colours and smells are more difficult to protect than word or logo marks, as it is difficult to show distinctiveness (see below) or represent it graphically (particularly with sounds and smells).

· The mark must have distinctive character and must not be descriptive for the goods and services for which you are applying to register your trade mark. For example, THE LAW FIRM SIMULATOR would be a non-distinctive, descriptive term for a video game that let’s you run your own name, because it describes what the game does.

On the other hand, Archetypes for podcasts would likely be seen as distinctive and non-descriptive, because the word is not widely in use for podcasts, and it doesn’t describe what the mark is related to.

· Your trade mark cannot be identical or similar to another trade mark that is registered for identical or similar goods and services – if the trade mark you are applying to register is identical or similar, you open yourself up to opposition proceedings and trade mark infringement claims, so it is important to make sure there are no marks on the trade mark register that would be a risk to your registration!

If you are looking to register a trade mark, please get in contact with us and one of our intellectual property solicitors would be happy to discuss trade mark requirements in further detail with you.

Written by Chloé Vertigen – Solicitor