0

Should I file a Trademark Application with Standard Characters or a Stylized Logo?

Two options: Standard Characters or Specialized Form (Stylized and/or Design)

Standard Characters

Standard character marks consist of plain text. The text of the trademark may include “word(s), letter(s), number(s), or any combination thereof, with no design element and when you are not claiming any particular font, style, size, or color, and absent any stylization or design element.”

Qualifications:
For a mark to quality as a standard character trademark, it must consist of only acceptable standard characters – letters, numbers and some symbols, such as the ampersand (&), the dollar sign ($), the asterisk (*), etc.

Standard character set available USPTO Trademark Standard Character Set.

Registering a trademark in standard characters provides the broadest rights for your trademark when your mark primarily consists of words, letters, and numbers. It allows you to use those words, letters, and numbers in any manner, i.e. design, without worry about losing your the benefits of a trademark registration. Restated, a word mark in standard characters will typically have broader protection than the same words registered in a specific style or color. You can still use a standard character word mark in a stylized format, and this use will be accepted by the U.S. Patent and Trademark Office (USPTO) as evidence of use of the mark.

Special Form (Stylized and/or Design)

Stylized marks comprise stylized word(s), letter(s), and or number(s), and/or a design element.

Examples: certain font, certain color, certain logo design.

With a stylized mark, you are limited to protection for the chosen font, color, or design that you submit to the Trademark Office. Whereas, with a standard character mark, you may have protection for the words, letters and numbers comprising your mark in many different forms with various fonts, colors, and designs.

Since your protection is limited to the design specified in your registration, if you change your logo design, color or font, you will have to file a new trademark application to protect a future change. With respect to the color of your design, you can protect against future changes by choosing black and white instead of a color, but this still limits your ability to change fonts or other design elements without the need to file for new protection. In other words, you will have to always continue using the design as it appears in the registration.

Changes in the design can cause problems in the future in renewing the trademark. Future operators of your business may not realize this and may make such changes, putting the trademark registration in jeopardy. If “material alterations” are made to the design of the mark, the USPTO will not accept specimens as evidence to show continued use of the registered design mark. In addition, the altered mark may forfeit the benefits of the trademark registration during enforcement of the mark.

Sometimes, trademark owners mistakenly believe that the design of the mark provides value. However, this is often not really the case. Examples of designs that really do have value are unique designs such as the Nike “swoosh” and the Coca-Cola script logo. Even separate from the words associated with the companies, these logos have distinct trademark value for their owners.

Here are some common situations where the design of a mark does not provide any particular value to the owner:

  1. Nothing Unique: A “stylized” trademark includes anything beyond just the name itself. But a rendering of the name in italics or a particular color or in a common geographic box – or any of these things without more – would not typically be the subject of trademark because there’s nothing unique about the design.
  2. No Particular Association in the Market: In these situations, the consumer does not readily associate the design itself with the owner, but rather the name itself. Thus, no particular value is gained by protection of the design elements.
  3. Reduces Name Strength: The design registration limits the strength of protection for the name. With a design registration, the trademark rights in the name are tied only to the design, which may limit protection of the name.

Criteria For Filing a Design Trademark Application:

Here are some criteria for choosing to filed a trademark application for a stylized design or logo:

  • Design is important element overall brand recognition
  • Logo/design is the only way the mark is presented publicly
  • Name function as mark without the design

Another note, sometimes the attorney may recommend filing for registration of the stylized mark for practical legal reasons. Where an existing prior trademark might preclude a trademark owner’s ability to obtain standard character mark registration (based on “likelihood of confusion”), additional design features of the mark may make the mark distinctive and distinguishable from the conflicting mark so as to entitle you to a trademark registration with the USPTO or prevent confusion. It’s reasonable to consider using the availability of a stylized filing to get protection of a mark where you could not otherwise. An attorney would advise your accordingly.

Can you File for Both?

YES
But Here Are Some Drawbacks:

  • Requires two separate trademark applications
  • Double your filing fees
  • Suggests doing a more complex preliminary search for other marks with similar designs, even those not using the same words, numbers or characters

Why Would I File for Both?

Many small businesses will not file trademark applications for both standard characters and designs because of the cost and dimishing return. Typically, Clark & Bellamy, P.C. advised filing for both if it is affordable to the client and a reasonable part of a long-term business strategy. Whether to file for registration of the design is ultimately a business decision that depends on the overall plans for the enterprise. Consider whether the words that comprise the mark or their appearance is more importatnt, and whether the standard characters protect the name overall. Also, consider the need for flexibility for new product lines and use and recognition of the trademark name on the web and in print articles.

Ultimately, if you can afford it, you can file for both a standard character trademark registration and a stylized mark and build an even stronger brand that includes your style.

Leave a Reply

You must be logged in to post a comment.