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Can you trademark a word in a dictionary?

https://www.theverge.com/2013/7/31/4574878/microsoft-skydrive-name-change-bskyb

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.

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    Microsoft owns Windows. Ever heard of Apple Computers?
    – Bernhard Döbler
    Commented Jan 9, 2022 at 0:37
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    That group does not own the word "Sky". They own the trademark for the word "Sky" used in specific contexts. Better just to leave out the op-ed than make incorrect statements. You don't have to wonder about those words either. All of them are current or recently-expired trademarks, as a simple search for "[keyword] trademark" easily found. -1 because so much of this question is either unnecessary or shows zero effort.
    – user4657
    Commented Jan 9, 2022 at 0:44
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    "Can you trademark a word in a dictionary?" yes. The fact that Sky owns their broadcasting trademark doesn't prevent you from trademarking Sky as the name of, for example, your pigeon grooming salon.
    – phoog
    Commented Jan 9, 2022 at 1:36
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    Can't find the reference right now, but I remember Microsoft not being able to trademark "DOS" in the EU because it's the Spanish word for "two". MS-DOS was OK as a trademark though.
    – Guntram Blohm
    Commented Jan 9, 2022 at 14:37
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    Related: What happens if a brand or company's name is a common everyday word?
    – Andrew T.
    Commented Jan 9, 2022 at 15:20

4 Answers 4

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Yes, but...

Trademarks generally have a particular class of goods or services they apply to. For a common word such as "sky", a trademark will only be granted for a very narrow set; there's no chance of getting an "all purposes" trademark like you could for a made-up word.

For example, VuongGiaNghi Nguyen holds a trademark to "Sky" in the United States when describing "Eyelash Glue, Eyelash Extension Glue, False eyelashes, False eyelash perm kit, Lash Extensions", while Strange Loop, LLC, holds a trademark to it when describing "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".

I'm guessing that British Sky Broadcasting's trademark has a "goods and services" that overlaps or is very similar to Microsoft's use of "sky".

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    OneDrive and Sky are both in classes 9, 38, 42. In the actual text of the class content, I can’t see any word for word overlap. I wonder if the way classes are described changed at some point? I’ll also note that the Sky trademark covers a lot. trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002415829 trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00801213324
    – Tim
    Commented Jan 9, 2022 at 11:03
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    And another note that the logo(s) are separately trademarked, and have significantly broader categories (including 45: horoscopes!). So you can’t use the word “Sky” as a trademark in the above, but you can’t use the word “Sky” in the font Sky uses / with the translucency. trademarks.ipo.gov.uk/ipo-tmowner/page/…
    – Tim
    Commented Jan 9, 2022 at 12:16
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    It's not unusual to have overlapping usages in different geographies or types of usage, whether the same word or a similar one. The general principle in the case of trademark infringement disputes is whether the usage is "likely to cause confusion in the mind of a customer". If you try to use the word 'Sky' to describe any kind of entertainment service, then expect an immediate challenge from BskyB... but if you wanted to use it for let's say a new variety of tulips then it's extremely unlikely that an infringement action against you would succeed.
    – Martin CR
    Commented Jan 9, 2022 at 20:41
  • Wasn't there some kind of agrreement like this between the Beatles' Apple Records and Apple Computer in the 1980s? IIRC Apple computer was not allowed to enter the music business and Apple Records filed suit against them again in the late 80s when Apple Computer released MIDI peripherals and a computer (the Apple IIgs) which had such good for the time audio capabilities that it could be used for professional audio mixing.
    – jwezorek
    Commented Jan 10, 2022 at 21:11
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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:

  • Within a defined class of goods or services
  • When actively defended
  • When a court judges that there was either deliberate "passing off", or a reasonable chance of confusion

This BBC News article about the SkyDrive case has a rather better explanation than most:

Although BSkyB ended its Store & Share cloud storage service at the end of 2011, it had argued that Microsoft's use of the word "sky" in its brand posed a problem since it still ran other digital services including its Sky Broadband and Sky Go video streaming products.

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.

So, all three things came into play here:

  • Sky had a claim to the trademark in a relevant class of products
  • They actively defended the trademark by taking Microsoft to court
  • Microsoft defended the case, but the judge ruled that there was scope for confusion

Like a lot of things in law, this is all much less "black and white" than many people believe, and there is often room for debate and bargaining. Another famous case is Apple vs Apple, which went on for decades, with multiple rulings and settlements.

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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.

Tornado, another one of your examples, is a community in West Virginia, 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.

According to the United States Patent and Trademark Office (USPTO):

A trademark 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.

You become a trademark owner as soon as you start using your trademark with your goods or services. You establish rights in your trademark 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 trademark with us.

Emphasis mine.

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.

Can an everyday word be trademarked? Clearly. Whether that has the actual effect that you think a trademark has, is another question.

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Yes

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.

Prominent trademarks that are dictionary words are Windows, Apple, Puma, (Ford) Focus, (Ford) Falcon, (Toyota) Sequoia, (Toyota) Highlander, (Unilever) Surf, (Unilever) Tide etc.

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.

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    This is hardly an authoritative source. Are you certain there is no case law which makes dictionary words exceptions to what can be trademarked, or at least raises the bar for the requirements on what needs to happen for a dictionary word to become a trademark?
    – grovkin
    Commented Jan 9, 2022 at 3:51
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    @grovkin: There are limitations as to the circumstances under which dictionary words can be trademarked. If, for example, someone tried to trademark an automobile brand called "Car", that would almost certainly be rejected because the word "car" is often used to describe automobiles. If, however, someone wanted to trademark a car called the "Stove", however, that would likely be approved because nobody would normally use the term "Stove" to refer to any automobile except in reference to that brand.
    – supercat
    Commented Jan 9, 2022 at 17:29
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    Ford itself is a dictionary word --- a place where you can cross a river without a bridge.
    – The Photon
    Commented Jan 10, 2022 at 17:25
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    @ThePhoton No, it isn’t. “ford” is a dictionary word but the trademark “Ford” is a person’s name. They just happen to be spelled the same (except for the capitalisation)
    – Dale M ♦
    Commented Jan 10, 2022 at 21:26
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    @DaleM does that make a difference? Could somebody named Bob Boba trademark Boba for a tea drink?
    – The Photon
    Commented Jan 10, 2022 at 22:17

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