The Difference Between Design Marks and Word Marks
The line between word marks and design marks can get a bit blurry. When a trademark has some design elements, as nearly all marks do, how do you know if a trademark is too stylized to be filed as a word mark application with standard characters. Let’s look at some examples of trademarks with varying levels of design.
Need to file a proper trademark application with a lower risk of rejection? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to explore how we can help you get your trademarks registered.
How Much Design or Style Can Be Included in a Word Mark?
A trademark application for a word mark provides greater flexibility in that you can use the mark in a variety of different ways. Unlike a standard character application, a design mark application would require the applicant to use the exact logo on the goods or services with hardly any room for change.
Here are some examples of trademarks that might qualify for word mark applications.
Trademark With Only Wording In Particular Font
In most cases, a trademark that consists of wording without any graphic images should qualify as a word mark application. The particular style of the font ought not disqualify a trademark from using the standard character format.
Wording Above or Beneath a Graphic Image
Remember that a trademark application cannot include multiple marks. Suppose your packaging shows your desired trademark above or beneath a graphic image. Can you file a word mark application for only the wording without the graphic?
It depends upon the degree of separation between the wording and the graphic object. Experienced trademark attorneys ought to be able to provide some guidance on whether your particular usage would suffice for a word mark application.
The issue is the distinct commercial impression presented by the mark. Does the wording provide a distinct commercial impression apart from the graphic image?
Wording with Graphic Image on Same Line
I think it bears repeating that nothing in my blog constitutes legal advice. I’m repeating that disclaimer here because this situation can be especially tricky. When you have a graphic image on the same line as wording, you might have a composite trademark.
A composite mark is considered one unitary trademark with a combination of wording and stylistic elements. There might be a significant risk of rejection in a word mark application filed for a composite mark. Ultimately, you should consider having an experienced trademark attorney provide guidance.
Wording With a Letter or Number Replaced by a Graphic Image
Suppose your trademark primarily comprises a word, but a letter or number is replaced by a graphic image. Here are some examples where a character is replaced by a graphic image:
- Letter T replaced by a graphic image of a tree
- Letter O or number 0 replaced by an image of a round object
- Uppercase I or number 1 replaced by an image of a vertical structure
- Dot in lowercase letter i or in exclamation point ! replaced by image of a round object
There are countless examples where a character can be replaced by a graphic image.
In this situation, a design mark application should be filed because certain characters are being presented in a distinctive form that creates an uncommon or special commercial impression that would be lost in a word mark application.
Marks with Superscripts, Subscripts or Exponents
Any marks with superscripts, subscripts, exponents or other characters not in the USPTO’s standard character set must be filed as a design mark application.
Mark with Degree Symbol
A mark with a degree symbol may be filed as a word mark application.
Marks in Color
Just because your mark is shown in color does not necessarily mean that you must file a design mark application. If the mark contains no graphic images, then a word mark application is suitable even if you plan to display your trademark in specific colors.
If protecting a particular color scheme is important, then a design mark application should be filed.
Can You File a US Word Mark Application Based on a Foreign Design Mark Registration
A US trademark application based on a foreign trademark application or registration must contain the exact same mark as the foreign filing. So if the foreign trademark filing shows a design mark, then a design mark application should be filed in the US.
Of course, anyone can file a US trademark application for a word mark if you do not plan to rely on a foreign trademark filing.
Uppercase vs. Lowercase Letters: Are Word Mark Applications Case Sensitive?
A word application is case-insensitive. In actual use, a word mark application allows you to use any combination of uppercase or lowercase letters in connection with selling your goods or services. We generally prefer to file our word mark applications in ALLCAPS.
How an Experienced Trademark Attorney Can Save Years of Delay
Every business person has decisions to make about whether trademark services are the worth the investment of usign an experienced trademark attorney. Sure, you can do it yourself.
From our perspective, we see many DIY trademark applications that encounter huge issues. Some of those problems are irreparable. As you weigh the value of using a professional, consider whether saving a few hundred dollars is worth the risk of losing years of time.
Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to see how we can help you get a trademark registration in less time.
