Legal Law

What type of trademark will give you the best protection?

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 selection of various types of trademarks. In fact, the applicant for a trademark can select between a character mark or a special shape mark, which includes a stylized mark, a logo or a design mark plus words. While a federal trademark registration certainly has intrinsic value, it is imperative to understand what type of trademark will provide the applicant with the best trademark protection and applicability.

A character mark is a mark composed solely of 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 in the application. A character mark often provides the greatest and most comprehensive protection to its owner because it allows you to limit a third party’s use of any mark that is confusingly similar to your mark. The word and / or words are protected, and the owner may use those words in any way and on any medium as long as it serves as a trademark to identify the source.

A special shape mark, also known as a stylized and / or design mark, must be used to register a mark that is made up of stylized words, letters and / or numbers and / or has a design element. If the trademark owner wants to protect not only the characters, but also the design, the color or some other distinctive element such as a logo, a special shape trademark is required. This type of brand is commonly referred to as a designer plus words brand. An example would be where Nike has the swoosh and the word Nike appears below the swoosh. The applicant should consider registering a design mark plus words where their mark contains both an image and a character component. However, if that image changes in any way, the record loses its applicability to some extent as far as that exact record is concerned. For this reason, it is sometimes advisable to search for a character mark for the particular words associated with the design plus the word mark in order to provide the broadest protection. For example, while a design plus word mark provides protection for the words themselves, trademark registration provides benefits only as part of the full mark.

A special shape mark also cannot include words, letters, or numbers. A special shape trademark registration could be a logo itself. In such a case, no words are included as part of the mark. An example would be the Nike swoosh. This particular type of trademark is valuable, but if the owner modifies the logo in any way, the trademark registration belonging to the original logo loses its applicability and possibly its value. As such, trademark owners would be well served to apply for a new trademark or service mark registration when the logo changes in a material way. Ultimately, the trademark must be distinctive in order to be registered. Therefore, sometimes the words themselves cannot be protected through a character mark, but rather the design mark plus words provides the distinctive character necessary to achieve 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 trademark when selecting which type of trademark will provide the best protection. If the applicant is going to use the characters in some type of document where the image or the stylized design will not also be, the character mark would be the most beneficial. However, obviously, there are times when both the characters and the design will be used together, and in that situation, a design plus a word mark provides the necessary protection. The applicant should remember that their logo or design mark plus word mark may not protect the mark after changes have been made, so another application must be filed with the USPTO. Either way, it is critical to ensure that your trademarks, of whatever type, are registered and enforceable.

An experienced trademark attorney will be able to better advise you on which trademark to choose. Numerous factors determine whether a character mark or design plus a word mark, for example, may or may not be advisable. For example, a trademark may have already been filed and / or registered with the USPTO that would exclude 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 also distinguishable from the existing filing and / or registration so that you are entitled to a trademark registration with the USPTO. Again, these issues will be identified by an experienced trademark attorney through a trademark authorization, or during initial registration discussions.

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