Many of our clients have a logo (design), as well as a brand name, and want to know which they should register as the trademark. The best answer is “both”, but sometimes there are budgetary concerns. I’ve created a “brand” to help explain. Meet “Typhoon Action”.
Initially, the two most common types of trademarks are word marks and design marks. A word mark is, as it sounds, the actual words that are present in the trademark. This is also called a “standard character” mark. The registration is for the words themselves without claim to any particular font, style, size, or color. This can be a registration for a brand name, slogan or a tag line. In my fictional example the work mark would be TYPHOON ACTION.
Design marks, also called “stylized form” marks, are most commonly logos. This is a mark that is comprised of stylized words, letters, numbers, and/or design elements. Often the brand name is incorporated into the logo, as in my example, but it doesn’t have to be.
Generally speaking, if your logo consists of words as well as some design elements, a registration for the words can provide more protection than a registration for a design. This is because the word mark registration protects the words themselves without reference to any particular font, style, size, or color, but the design mark protects the design and the way the words are used in the design. On the other hand, if the design elements of your logo are very important and unique identifiers, if there are no words, and/or if you use the design widely on a variety of visual material like websites, blogs, brochures, flyers, magazines, etc., filing an application for the logo may be the way to go.
Doing a clearance search for a design mark is more complicated than for a word mark. Not only do you need to search the literal elements of the mark (the words or numbers), but you also need to search for the design elements. The PTO assigns each element of a design a unique identifying number. For example, shields or crests with letters, punctuation or inscriptions on them is 24.01.03. In our sample design there is also a star, and a single star with five points is 01.01.03. Then you ahve to look up rectangles, and so on. So, you can see that even with a “simple” design like our example this can get complicated.
Similarly, design mark applications require a little more work to prepare. In addition to the basic information, you must also provide a “drawing” (.jpeg or .pdf image file) of the design. Finally, you then must describe the logo in specific detail. For our example, a shield bisected in the middle, black on the left half, red on the right half, with the letter T in white slightly above and to the left of a p in gold in the center of the shield and a black star over the p with a black bar over the top of the shield with the words TYPHOON ACTION in gold stylized font”. Sure is a mouthful!
All that being said, design marks are a great way to differentiate your brand. An eye catching design can be more effective than using just the words, because people are so visual. They see the design and they automatically know who the company is. And that is the goal of a trademark–to link the mark in people’s minds with your product or services.
So, some of the things to consider when deciding whether to file for your design mark or your word mark are:
- How much do you love the design? Do you think you might change it later?
- How much will you use the design?
- Will you use the words without the design more often than the design?
- How strong of a mark are the words alone?
- In how many classes are you filing?
There are a variety of other situations where you may be better served to file one over the other, as well. However, most of these are situational, often based on the results of the clearance search, the classes in which you are filing, the strength of the word mark, and other individual factors. This is another reason it is so important to work with an attorney experienced in filing trademark applications. If you have questions about whether to file your design mark, word mark, or both, we would be happy to assist you.
The information presented on this website is intended to convey general information only and not to provide legal advice. No action should be taken in reliance on the information contained on this website. An attorney should be contacted for advice on specific legal issues. trademark logo trademark logo