What is a design mark application?

If you were asked to conjure up the first trademark that comes to mind, what would you see? A logo with wording? Trademarks typically consist of combinations of wording and design features. This word-plus-design combo is known as a “composite mark” in trademark lingo. If you are thinking of registering a composite mark, you have to decide whether or not you want to protect the specific stylized features of the mark. If so, you may want to consider a design mark application.

In contrast to a word mark application which seeks to register only the wording, a design mark application covers a trademark with its stylized features such as graphics, fonts, colors, unusual forms of punctuation, superscripts, subscripts, exponents or other characters that are not in the USPTO’s standard character set.

What is the difference between design mark and word mark applications?

A trademark application for a design mark seeks to protect the specific graphic design elements of the mark in addition to the wording. In theory, a design mark registration may enable the trademark owner to assert infringement against a similarly looking logo even if the underlying wording in the logo may be different. It would not take too much imagination to think of ways to copy a particular stylized logo while using different words.

What is a special form drawing?

Every design mark application requires a special form drawing that shows the mark with its design features. You will need to submit a JPG file of the drawing that preferably has a length and width between 250 pixels and 944 pixels, although that requirement has since been waived by the USPTO.

What are advantages of design mark applications?

To be registrable, a mark must not be confusable with previous live trademark filings. Distinctive design elements in your mark may provide additional arguments that there is no likelihood of confusion with prior trademark filings. While the Trademark Office will often give greater weight to the wording, an applicant can argue that a particular dominant feature of the mark is more significant than others and, thus, should be given the most weight in determining likelihood of confusion.

Keep in mind that dead trademark filings – abandoned, expired or cancelled marks – do not present an obstacle to registration. A dead filing, however, does not necessarily mean that the trademark owner has stopped using the mark. The live/dead indicator merely refers to the status of a trademark filing with the USPTO, and does not bear any relevance on the actual usage of the mark by the owner.

What are drawbacks of design trademark filings?

A critical requirement of applying for a design mark is that the applicant’s use of the mark must exactly match the drawing as initially filed. For example, if the applied-for mark shows a graphic of an object (e.g., tree) to the left of certain wording, then the specimens of use must also show the tree in exact same position. You cannot move graphic design elements or wording around and expect approval of your examples of use. If a certain font was shown in the initial application, that same font must be used. The placement and location of each object in the mark may not be rearranged in the specimens of use.

These strict requirements of conformity apply not only during the application process, but also throughout all registration renewals – in other words, throughout the lifetime of the registration. If your company subsequently changes the logo, even ever so so slightly, you will likely have to file a new trademark application. This is why trademark owners often opt to apply for the word mark only, or in conjunction with a design trademark application.

What are traps to avoid in a design mark application?

For a US applicant, a trademark application will generally be based on Intent-To-Use or actual use. One trap of filing a use-based application for a design mark is that the applicant may be mistaken about the date of first use. Suppose an applicant began using an earlier version which was replaced by a new-and-improved version. If the later version is the mark shown in the trademark application, the applicant should be careful to identify the date of first use of the later version. This would not be a trap for a word mark application so long as the wording remained consistent throughout the versions.

If a trademark owner has different product lines under a particular brand, it is not uncommon for different versions of the design mark to appear on certain product lines. Space limitations on a certain product, for example, may make it impractical to display wording from left to right all on a single line while other products can accommodate it. This leaves the trademark owner with different versions of a brand, which would require multiple design applications in order to protect each design mark properly.

Should you include a color claim?

Unless color is an important feature of the mark, I generally recommend omitting any color claims. We prefer to file design mark applications in black-and-white (aka grayscale). Doing so gives the applicant flexibility in choosing any colors in using the mark, and in changing colors in the future without having to file a new trademark application.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
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Vic Lin

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