What Kind of Trademark Will Give You the Best Protection?
January 9, 2017
A trademark is a word, symbol, or phrase that identifies the source of an entity’s goods or services. Applicants attempting to acquire a federal trademark registration with the United States Patent and Trademark Office are faced with a choice of various types of marks. In fact, a trademark applicant may select between a character mark or a special form mark, which includes a stylized mark, a logo, or a design plus words mark. While a federal trademark registration undoubtedly has intrinsic value, it is imperative to understand which type of mark will provide the applicant with the best trademark protection and enforceability.
A character mark is a mark composed of only words, letters, numbers, or a combination of them. It does not contain any particular stylized design, color, or image as part of it. An applicant who successfully acquires a trademark registration for a character mark will have the exclusive right to use that mark in connection with the goods or services listed within the application. A character mark oftentimes provides the greatest and broadest protection to its owner because it allows the owner to limit a third party’s use of any mark that is confusingly similar to its mark. The word and/or words are protected, and the owner can use those words in any fashion and on any medium as long as it serves a source identifying function as a trademark.
A special form mark, also known as a stylized and/or design mark, should be used to register a mark that is comprised of stylized words, letters, and/or numbers and/or has a design element. If the trademark owner not only wants to protect the characters but also the design, color, or some other distinctive element like a logo, a special form mark is required. This type of mark is commonly referred to as a design plus words mark. An example would be where Nike has the swoosh and below the swoosh lists the word Nike. An applicant should consider registering a design plus words mark where its mark contains both an image and character component. However, should that image change in any way, the registration loses its enforceability to a certain extent as it pertains to that exact registration. For this reason, sometimes it is advisable to pursue a character mark for the particular words associated with the design plus words mark in order to provide the broadest protection. For example, although a design plus words mark does provide protection to the words themselves, it is only as part of the entire mark that the trademark registration adds benefit.
A special form mark may also not include any words, letters, or numbers. A special form trademark registration could be a logo in and of itself. In such a case, there are no words included as part of the mark. An example would be the Nike swoosh. This particular type of mark is valuable, but should the owner modify the logo in any way, the trademark registration pertaining to the original logo loses its enforceability and possibly its value. As such, trademark owners would be well-served to file for a new trademark or service mark registration when the logo changes in a material way. Ultimately, the mark must be distinctive in order to achieve registration. Therefore, sometimes the words in and of themselves are not protectable via a character mark, but instead the design plus words mark provides the necessary distinctiveness in order to achieve a registration with the USPTO.
With the various types of trademark registrations in mind, a trademark applicant should consider the various ways in which it will display its mark when selecting what kind of trademark will give it the best protection. If the applicant will use the characters in some sort of document where there will not also be the stylized image or design, the character mark would be the most beneficial. However, obviously there are times where both the characters and the design will be used together, and in that situation a design plus words mark does provide the needed protection. An applicant should remember that its logo mark or design plus words mark may not protect the mark after changes have been made, therefore necessitating another filing with the USPTO. Either way, ensuring that your marks, whatever type, are registered and enforceable is critical.
An experienced trademark registration attorney will be able to best advise you regarding which mark to choose. Numerous factors determine whether or not a character mark or design plus words mark, for example, may be advisable. For example, a mark may already be filed and/or registered with the USPTO that would preclude a character mark due to a likelihood of confusion. However, the additional design feature of the mark will not only make the mark distinctive but distinguishable from the existing filing and/or registration so as to entitle you to a trademark registration with the USPTO. Again, these issues will be identified by an experienced trademark registration attorney via a trademark clearance, or during initial discussions surrounding the registration.