WHAT TYPE OF TRADEMARK APPLICANT SHOULD I FILE?
A. Design elements of a trademark
B. Changes to the design elements of a trademark
C. Various types of trademarks
1. Standard Character trademarks
2. Special Form trademarks
E. Filing for a Logo Trademark Alone Trademark Application
F. Filing for Logo Mark with Embedded Text Trademark Application
G. Filing for Color as an Element of the Mark Trademark Application
H. Why are there So Many different types of Trademark Registrations
I. Economizing: Limited Budget for Only One Application
J. Distinctive Trademarks: Standard Character
K. Weak Trademarks: Combine with Logo or Stylistic Elements
L. Important Logo-Based Trademarks
M. Font Only Font Only
N. Seek Multiple Trademark Applications at a Later Date
O. Conclusion
Before filing a federal trademark application, it is important to determine whether any logo or stylistic element(s) will be included as part of the claimed trademark in the application. This is because the US Patent and Trademark Office requires applicants to specify whether any font, style, size, color, or graphics are part of the claimed mark. This information is used to determine the scope of protection that will be afforded to the trademark. It is important to carefully consider and describe all elements of the trademark in the application to ensure that the mark is adequately protected and to avoid any potential challenges or confusion in the future.
A trademark that does not claim any specific font, style, size, color, or graphics is known as a standard character mark. This type of mark generally provides broad protection to the words or letters themselves, regardless of the specific font, size, or style in which they are presented.
In contrast, a trademark that includes specific stylization or design elements, such as a particular font or color, is known as a special form mark or stylized mark. This type of mark generally provides protection only for the specific stylized or designed elements included in the mark, rather than the words or letters themselves in any form.
It is important to carefully consider the type of mark you want to register and to include any necessary style elements in the trademark application to ensure that the mark is adequately protected.
When deciding whether to pursue a trademark registration on a standard character mark or a special form mark, there are several issues to consider. Here are some of them:
Scope of protection: A standard character mark provides broader protection to the underlying words or characters, regardless of their stylization or design, whereas a special form mark only protects the specific stylized or designed elements included in the mark. If the words or characters in the mark are the most important aspect of the branding, then a standard character mark may be the best option to provide broad protection.
A. Design elements of a trademark
If the design elements of a mark are highly distinctive and add significant value to the brand, then a special form mark may be necessary to protect those elements.
Cost: The cost of filing a trademark application can vary depending on the type of mark and the number of classes of goods or services to be covered. In general, a special form mark may be more expensive to register than a standard character mark.
B. Changes to the design elements of a trademark
If there is a possibility that the design elements of the mark may change over time, it may be more practical to pursue a standard character mark, as it provides greater flexibility to make changes without losing protection.
1. Standard Character
A standard character mark is a type of trademark that consists only of the words, letters, or numbers of the mark, without any design element or specific font, style, size, or color. Standard character marks are filed in the standard character format, which means that they are not limited to any specific font or style, and can be used in any context or design. This type of mark provides the broadest protection and flexibility for the owner, as it covers any use of the words or letters, regardless of the design or appearance.
An example of a standard character mark is the trademark "FORD." The mark consists of only letters and does not include any design element or claim to a particular font, style, size, or color. As such, it is considered a standard character mark.
2. Special Form
Special form marks, also known as design marks, cover marks that include a design element, stylized lettering, or other non-standard character elements, such as color or size. When filing a special form mark, you must provide a description of the design or stylized element, along with a visual representation of the mark. The US Patent and Trademark Office will then examine the mark to determine whether it is eligible for registration based on factors such as distinctiveness, similarity to existing marks, and the appropriateness of the design or stylized element.
D. Filing for a Logo Trademark Alone Trademark Application
A logo mark consists of only a logo or design element, with no accompanying words, letters, or numbers.
The McDonald’s "M" logo is an example of a logo mark alone. It has no standard characters in it.
E. Filing for a Combined Logo and Text Trademark Application
This type of mark consists of a logo accompanied by standard characters placed next to it.
F. Filing for Logo Mark with Embedded Text Trademark Application
A logo mark with embedded text is a type of special form mark where the text is integrated into the logo design, rather than appearing adjacent to it.
G. Filing for Color as an Element of the Mark Trademark Application
This type of mark claims color as an element of the mark.
Strong Protection
It is not uncommon for companies with significant resources to file multiple trademark applications on their marks for the same goods or services. This is done for a variety of reasons, including to provide a broader scope of protection, to cover variations of the mark, to allow for flexibility in the use of the mark, and to increase the chances of securing trademark registration. However, filing multiple applications can also be more costly and time-consuming, and it is not always necessary or practical for every business.
Filing multiple trademark applications covering the same goods/services can provide broad protection to a brand. By doing so, a company can cover its bases and protect its brand in various ways. For example, a company can file one application covering the standard characters of its mark, another application on the logo combined with the words, and yet another application on
the logo alone without the word if the logo is used in that manner. This way, the company can cover the mark in different forms and increase the chances of obtaining stronger protection.
H. Why are there So Many different types of Trademark Registrations?
Standard character marks protect only the wording, letters, or numbers in the mark, without any claim to a particular font, style, size, color, or graphics. This means that the protection is broad and flexible, as it covers any use of the wording, regardless of how it is presented. It also allows the owner to use the mark in any font, style, or color they choose, without having to file additional trademark applications.
Special form marks, which include logo, graphical, or stylistic elements, are limited to the specific design elements that are included in the mark. This means that if the design elements of the mark are changed or removed, the protection afforded by the mark may no longer apply. In contrast, standard character marks protect the words, letters, and/or numbers in any font, style, size, or color, without any specific design elements.
The longer a mark has been in use and registered, the stronger it becomes, and the harder it is for others to challenge its validity. This is because trademark law recognizes that the primary purpose of trademarks is to identify the source of goods or services, and a mark that has been in use for a long time is more likely to be associated with a particular source in the minds of consumers. This is known as the doctrine of secondary meaning, which essentially means that a mark has acquired a unique meaning in the minds of consumers that is associated with a particular source. This can give the mark owner significant legal advantages in protecting the mark.
I. Economizing: Limited Budget for Only One Application
If your mark consists only of words, letters, or numbers without any stylization or design elements, then you would typically select a standard character mark in the application process. This ensures that your protection covers the words, letters, or numbers themselves, regardless of how they are presented.
When choosing to file a single application, there is always the risk that it may not provide as much protection as multiple applications. However, there is a trade-off between cost and protection, and it is up to the trademark owner to decide what level of protection is necessary and what can be afforded. In some cases, it may be more cost-effective to file multiple applications, while in other cases, filing a single application may be sufficient. Ultimately, it depends on the specific circumstances of the trademark owner and their business.
J. Distinctive Mark: Standard Character
If the words or characters of your mark are very distinctive, pursuing a standard character trademark may be a good approach. This is because a standard character mark protects the words or characters of the mark themselves, regardless of how they are presented. This can provide broad protection for the mark and make it easier to enforce against potential infringers. However, it is important to consider whether the mark may be more valuable or recognizable with a particular logo or design element, in which case it may be more appropriate to pursue a special form mark.
Standard character marks provide the broadest protection because they cover the characters and words of the mark presented in any font style, arrangement, or graphical representation with or without additional logo or graphic elements. This means that standard character marks are not limited to any particular color, style, or graphic, making them ideal for marks with very distinctive words or characters.
K. Weak Marks: Combine with Logo or Stylistic Elements
If the words or characters of a mark are weak or descriptive, they may not be entitled to protection on their own. In this case, a trademark application that claims the combination of words and a logo may be more effective in obtaining trademark protection. However, it's important to note that the logo must be used in conjunction with the words in the course of business in order for the mark to be protected. If the logo is not used in connection with the words, then a trademark registration for the combination may be vulnerable to cancellation.
L. Important Logo
Pursuing a special form mark including the logo and the words could provide additional protection and prevent others from using a similar combination of words and logo in a way that could cause confusion with your brand. However, it's important to keep in mind that a special form mark is typically more limited in scope than a standard character mark, as it only covers the specific design or stylized element included in the mark.
M. Font Only
If the only stylistic element of your mark is the font style or color arrangement, and the mark itself is sufficiently distinctive, it's usually best to pursue a standard character mark. This is because standard character marks have broader protection and cover the words and characters of the mark in any font style, arrangement, or graphical representation with or without additional logos or graphics.
N. Seek Multiple Applications Later
As your business grows and expands, it may become necessary to expand your trademark protection as well. You can always file additional trademark applications later to cover additional elements of your mark or new goods or services. It's important to regularly review and assess your trademark portfolio to ensure that it continues to provide adequate protection for your brand.
O. Conclusion
Filing separate trademark applications for the words alone, the logo alone, and the logo with the words may provide the broadest protection for your mark. However, if you want to save costs, you may choose to file only one trademark application. Whether you should file a standard character mark or a special form mark depends on the distinctive nature of your mark, the importance of your logo, and the stylistic elements of your mark.