Word mark vs design mark – Differentiating the nature of trademarks for U.S. trademark registration


Hello everyone, my name is Bharath Konda. I am a trademark attorney. Today, I am going to discuss the differences between a standard character mark and a design mark. A lot of trademark applicants often ask me What is a standard character mark? Further, they also ask me, what is a design mark? Hence differentiating between these two and also comparing the similarities between the two is important. First, the trademark applicant needs to understand the nature of their brand and serving industry. Second, based on the demand and forecast of their brand, they need to create a mark that is unique and represents their values. Finally, the applicant needs to decide, how to represent the mark? For that reason, they need to select the type of mark such as a standard character mark or a design mark. Upon registration, one type of mark provides more value than the other type of mark for each individual trademark applicant. Let’s look at the definition of a standard character mark. The definition has three layers to it. Let’s go a layer-by-layer. Coming to the first layer, it states A mark including any word, name, letter, number or a combination of them. So, you can choose any mark that has a word a number or a combination of them. Word + number, letter + number, or anything. Coming to the second layer you should not choose any particular font style, color or size. So, you should not choose font arial, times new roman, etc. You should also not choose any particular color such as red, green, blue, etc. Coming to the third layer, a mark has to identify as a source to your goods or services. So that completes the three layers. So, this is the definition of a standard character mark. Therefore, the standard character mark is the broadest and most common form of federal trademark protection at USPTO. There is a misconception that standard character mark only protects the visual representation of your registered trademark at USPTO. That is not true. The standard character mark provides the broadest protection. It covers any font style, any size, any color and you will have better protection than if you choose with a particular style or font. Let’s consider this: Why you want to show your mark in standard character format. The trademark owner can sue anyone who infringes on the mark while using a variation of color, font style and size. The trademark owner may use the above-specified variations of a standard character with the registered mark. As a brand owner, the trademark applicant wants to maximize federal protection through standard character mark registration. Before you apply for a standard character mark, you need to identify the type of mark you are planning to register. Before you apply for federal trademark protection, you need to identify in the application which type of protection you are choosing. Standard character mark or a design mark. However, sometimes you may be restricted by your selection of the mark because it closely matches another registered mark, or a common-law mark. That is why a comprehensive trademark search is the most important consequential first step before applying for trademark registration. Let’s look at some of the examples of standard character mark. Let’s consider Nike, which is a multi-national corporation and it has a ton of trademarks. So “Nike” trademark is an example of a business name registration. Whereas, “Nike Track Club” is an example of a service mark for retail services.Whereas “10 R” is a Nike owned trademark for clothing goods. Nike has an extensive standard character trademark portfolio. If you would like to build your brand, then the starting point would be to get a trademark for your business name. There is a different youtube video about how to trademark a business name. You can look at that video for further information. So, continuing on, later, like your brand, products, and services diversify, you can apply for a standard character mark. The availability of a standard character mark depends on the comprehensive trademark search. Let’s look at the definition of a design mark. The design mark definition has three layers to it, similar to a standard character mark. So, the first layer says A mark including a design or words combined with a design. So, it has be a design or words combined with design. Coming to the second layer, this design has to be displayed in a particular font style, size, or color. So, you have to pick a particular font style, you may choose a size you can also choose a color such as red, green, blue, yellow, etc. Coming to the third layer, this design mark has to identify as a source for your goods or services or both. So, this is the definition of a design mark. So, it has to be a design or words combined with a design with a particular font style, size or color, identifying as a source for your goods or services. If your style-related need and look is definite and particular in nature, then applying for a USPTO trademark stylized mark is a good option. However, you should note that the standard character mark provides the broadest protection compared to a design mark. This is true in the situation of displaying standard characters in a particular style, size, or color. Let’s look at the types of design marks. There are essentially three variations of design marks or stylized marks. They include:(1) only design; (2) design plus words, letters, or numbers. and (3) stylized format of letters, words, or numbers. So, in the first layer, you only went with a design, whereas in the second layer you went with design plus words letters or numbers. It’s just a combination of design plus words Whereas in the third layer, you want with the stylized format of letters, words, or numbers. So, let’s look at when you need a design mark. When your brand needs a design mark right? I mean, it’s confusing between like why do I choose a standard character mark? Why do I choose a design mark? Sometimes, we need to apply for a design trademark, even though you may have a different registered standard character mark. You want to protect design variation because consumer identifies your product by this design variation. A few other times, design marks branding and association is highly important in competitive industries because some other standard character mark is already taken. So, your design variation can be uniquely identified by the customer. That is the advantage right in a competitive market especially. Stylized mark search is complicated, and you need a comprehensive search before you apply for registration, because there are a lot of design codes you need to select before you do a search and it’s slightly complicated than a standard character mark as standard character mark just involves words, letters, whereas design mark you need to choose design codes, you have to compare with what’s already in the market. So, it’s a slightly complicated process. But, it can be done. Once you register your mark, use the mark the way you registered it. Do not make alterations in the use of the mark. This is particularly evident in words combined with a stylized type mark. So let’s look at some of the design-related examples. I also looked at the “Nike” portfolio. It has a tremendous design-related trademark portfolio. Let’s look at some of the examples. Nike has a trademark that has a “tick” mark and a Nike name in it. You can see in this graphic. And the next one is a shoe outward design and the third one is a Nike Golf with a tick mark. So, these are some of the design-related trademark examples. You can see this graphic, all three of the examples which are really evident when you compare with a standard character mark. Why hire me for trademark legal services? I offer a comprehensive trademark search, trademark registration with USPTO, office action response, trademark renewal, trademark monitoring, statement of use affidavit, trademark assignment any incontestability affidavits, etc. I also offer copyright registration services. Please check my website at affordabletrademarkattorney.com. We have comprehensive guides on everything related to trademark, copyright, and patents. You can contact us via phone at 612-440-1784. You can also email me at [email protected]

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