Likelihood of confusion: Can a design mark be registrable over a word mark?

How does a design mark application compare to a word mark registration?

To register a trademark containing numbers and/or letters, a trademark application may typically be filed for the word mark (standard characters) or the design mark (e.g., logo). As discussed in this post on their differences, a word mark application covers the wording whereas a design mark application covers the stylistic. The issue arises when a design mark application is rejected as being confusable with a word mark registration containing similar wording, but no graphics or logos. Likelihood of confusion refusals between design and word marks occur frequently because the USPTO generally gives greater weight to the wording in a design trademark. Moreover, a word trademark registration is entitled to all depictions of the standard character mark regardless of font style, size or color.

In comparing a design mark to a word mark, the general principle is that the wording in the design trademark will carry greater weight. So to the extent that the wording in a design trademark is similar to that in a word mark, there will be a high risk of a likelihood of confusion rejection even though the design mark may contain certain graphic or stylistic elements.

When should greater weight be given to visual graphics or stylized features in a design mark?

A highly stylized design mark can be an exception to the general rule of wording taking primary significance. For example, a design mark may consist of a logo having cartoon characters or prominent graphic design elements. Suppose your mark includes a drawing of a person, animal or particular object that suggests a connection with the product or service. In such special cases, greater weight may be given to those design elements when determining likelihood of a confusion with a word mark in standard characters.

A practical question to ask is whether a consumer encountering your design mark might pay more attention to the graphic design elements as opposed to the wording. Does your trademark contain visually stylized elements that really jump out and grab the consumer’s attention? Does your logo contain some clever or cute graphic design elements which, when combine the wording, would form a unique impression with consumers?

Should you file a design or word mark application, or both?

If you are contemplating a trademark application for a logo, consider whether your logo contains any distinctive visual elements that may distinguish your mark over other registered trademarks having similar wording. In most cases, it may be safer to adopt a new mark with different wording if registrations for similar wording already exist.

The relative strength of the wording can also be a factor. For example, if several registrations for similar wording covering similar goods or services are owned by different parties, the coexistence of such a high number of similar registered trademarks would suggest that the wording is relatively weak. In such cases, a decent argument can be made that the distinctive stylized elements in a design mark application would be sufficient to distinguish the applied-for mark over the plurality of registrations for similar wording.

Need to respond to a likelihood of confusion Office Action?

Reach out to patent and trademark attorney Vic Lin by email or call (949) 223-9623 to see how we can help you register your design mark.

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