A trademark is a word, symbol, or phrase that identifies the origin of an entity’s goods or services. Applicants seeking to acquire federal trademark registration with the United States Patent and Trademark Office must choose from several types of marks. In fact, a trademark applicant can choose 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 mark will provide the applicant with the best trademark protection and enforceability.
A character mark is a mark composed solely of words, letters, numbers, or a combination thereof. It does not contain any particular stylized design, color or image as part of it. An applicant who successfully obtains 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 or words are protected, and the owner may use those words in any way and in any medium, as long as it serves a source-identifying function as a trademark.
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, color or some other distinctive element such as a logo, a special shape trademark is required. This type of mark is commonly known as a design mark plus words. An example would be where Nike has the swoosh and below the swoosh the word Nike appears. An applicant should consider registering a design plus words mark when 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 seek a character mark for the particular words associated with the design plus the wordmark to provide the broadest protection. For example, although a design mark plus words provides protection for the words themselves, it is only as part of the complete mark that registration of the mark adds a benefit.
A special shape mark also cannot include words, letters, or numbers. A special form trademark registration could be a logo itself. In such a case, there are no words 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 pertaining to the original logo loses its applicability and possibly its value. As such, trademark owners would do well to apply for a new trademark or service mark registration when the logo changes in a material way. Ultimately, the mark must be distinctive to achieve registration. Therefore, sometimes the words themselves cannot be protected through a character mark, rather the design mark plus words provides the necessary distinctiveness to achieve registration with the USPTO.
Considering the various types of trademark registrations, a trademark applicant must consider the various ways in which they will display their mark when selecting which type of mark will provide the best protection. If the applicant will be using the characters in some type of document where there will not be a stylized image or design, the character mark would be most beneficial. However, there are obviously times when both the characters and the design will be used together, and in that situation a design mark plus words provides the necessary protection. An applicant should remember that their logo mark or design mark plus words may not protect the mark after changes have been made, thus requiring another filing with the USPTO. Either way, it’s critical to ensure your trademarks, regardless of type, are registered and enforceable.
An experienced trademark registration attorney will be able to better advise you on which trademark to choose. Numerous factors determine whether a character mark or design plus word mark, for example, may be advisable. For example, a mark may already have been filed and/or registered with the USPTO that would preclude a character mark due to likelihood of confusion. However, the additional design feature of the mark will not only make the mark distinctive but distinguishable from the existing filing and/or registration to entitle it to a trademark registration with the USPTO. Again, these issues will be identified by an experienced trademark attorney through trademark clearance or during initial registration discussions.