Special form marks.
Standard character marks.
If the graphic design elements of your brand’s perfect logo weren’t confusing enough – the federal registration of that mark certainly is!
Because if your logo combines words and design…
You’ve got a couple of options available when you submit a trademark application with the United States Patent and Trademark Office (USPTO).
**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us.
This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.
Please chat with an attorney in your area to make sure you’re protecting your business.**
2 options for submitting a ™ application for your logo
There are 2 ways you can register your logo as a trademark with the USPTO:
1. Register as a word mark.
A word mark (aka a standard character mark) is simply text.
There is no design or graphic element to it. So, if you file a trademark application for a word mark, you’re only applying to protect – you guessed it – the words.
The USPTO’s application for a word mark specifically states:
“The mark consists of standard characters without claim to any particular font, style, size or color.”
This means your word mark is protected whether you use it in cursive, uppercase or lowercase, purple, in huge text on a billboard, or surrounded by fancy artwork.
Bottom line: the words themselves are protected, no matter what they look like.
2. Register as a design mark.
A design mark (aka a special form mark), on the other hand, specifically includes stylized elements like graphics, artwork, or color.
Registration of a design mark requires you to use the exact same design every time – you can’t move words or images around.
So, if tinkering with your logo is your favorite pastime, a design mark may not be for you.
Bottom line: the logo is only protected when you use your design mark in the exact same way it appeared when you filed your trademark application.
Real brand examples of word marks and design marks
How does this come into play in the real world?
Let’s take a look at Apple Inc., for example.
The company has a word mark registration for Apple Watch.
It also has a design mark registration for Apple Watch wherein the word “Apple” is replaced by their well-known logo (the apple with a bite missing from it).
Another example is Nike Inc.
The company has a word mark registration for Air Jordan.
It also has a pending design mark registration for Air Jordan, where the text appears in a stylized banner above a basketball with wings.
Or take Pespsico Inc., for example.
They have a word mark registration for Pepsi (obviously).
But they also have several design marks, including a stylized version of the word “Pepsi” in a very specific font (their infamous new logo that people have mixed feelings about).
When should you file a trademark application to protect both words and design?
All those examples of famous brands with both word and design marks are great, but when should you file a trademark application to protect both words and design?
A good general rule of thumb is this:
If your trademark includes both text and stylistic elements (like Pepsi’s new logo, for example), it’s a best-case scenario to file 2 registration applications with the USPTO.
1 for a word mark AND 1 for a design mark.
That way, you’re protecting both the words AND the design.
That said if you aren’t in a place where you can afford to file 2 applications, prioritize the word mark first.
You can always file a design mark application in the future, and you aren’t tied to one specific design yet.
What will you protect?
Word marks are meant to protect text.
Design marks protect your stylized elements/artwork.
But trademarks can get confusing fast, so it’s always a good idea to reach out to a trademark attorney if you find yourself wondering which option is right for you.
Whatever you decide, protect your brand assets.
Apply to work with me and get your trademark application filed with the USPTO.
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