Once someone has selected a brand name for their products or services, and has decided to proceed with a federal trademark application, the next question that arises is usually whether to file for a standard character mark or a design (stylized/logo) trademark. Choosing correctly – or incorrectly – can have important effects on the registerability and protection of your trademark.
Standard Character Mark
A word mark is a distinct text-only name of a company, institution, or product name used for identification and branding. A standard character trademark is one where the trademark has word(s), letter(s), and/or number(s) with no design element and no claim to any particular font, style, size, or color.
An application for a standard character trademark (also known as a word mark) protects the word in all visual displays of the trademark. A standard character trademark protects the trademark whenever it appears as part of a logo, design, or alone.
If applicant submits a claim of standard character format, the trademark shown in the drawing does not have to appear in the same font style, size, or color as the trademark shown on the specimen of use. (For more information about specimens of use, please see our blog post here). For example, when applying for a standard character trademark, the trademark in the application will likely show as all capital letters, however, when using the trademark in commerce, you can use capital letters, or not, or a stylized font, or use the trademark as part of a logo. In other words, a standard character trademark protects the word(s) regardless of how the words are displayed.
Design/Stylized Mark
The design/stylized or logo trademark is used to register words and/or letters having a specific stylized appearance, a trademark consisting of a design element, or a combination of stylized wording or design. In other words, a design trademark can protect a logo with or without words however, these trademarks can be interpreted to be limited, to some extent, by their logo, graphical or stylistic elements.
While the words/characters of a logo trademark will generally be given greater weight when comparing to other trademarks for infringement or conflict, it is possible that in some circumstances where a third party does not use the exact same wording as your trademark and does not have the same logo/style elements, then the third party may have a better chance of avoiding your claims of infringement based on a special form trademark alone.
Another possible problem with proceeding only with a special form trademark is that if you decide later to change your logo or the stylistic elements in the special form mark, then you might have to file a new trademark application on the changed version depending on the extent of the changes. For example, if a trademark is filed with the placement of a logo design on the left and words on the right, and you later change it, this may be considered a material alteration and you will need to refile the new display as a new trademark.
Further, you may not be able to renew the trademark registration if the old version is no longer in use. Trademark law requires continuous use to maintain a trademark registration. Therefore a trademark that has been registered for a long time will have a better chance of being considered strong and will be harder for others to challenge its validity. So, if you have to relinquish a registration because of logo design changes, you will lose the benefits of a long-lasting trademark registration. Standard character marks do not have this problem because they cover the words within the trademark as presented with any logo or stylistic arrangement.
If you have a trademark with a logo or design elements, and only wish to proceed with one trademark application, below is some general information to consider.
Practical Pointers
- Ideally, companies and sellers would file for both a standard character trademark and a logo design trademark.
- If you do not have a logo or graphical representation of the mark, then it is easy, and a standard character mark should be selected in the application process.
- If your mark is descriptive (refer to our blog posts here), then it is best to distinguish your trademark by adding a design or logo element.
- As your business develops, you may decide to dedicate more resources to file additional applications to cover your trademark in all of its various displays.
- Covering your trademark in multiple registrations can give you broader protection against infringers.
Before applying for any trademarks, it is always best to seek the guidance of an attorney experienced in trademark law. We can review your trademark, application, or USPTO refusal and work with you to determine the course of action suitable for your needs.
