What is the difference between a word mark (standard character) and a design mark?
There are two ways to register a trademark. While they go by different names, I simply call one a “word mark” and the other a “design mark.” A word mark consists of the wording in a particular trademark without regard to style, design or any graphic elements. A design mark includes those stylized features. In filing a trademark application, you must choose between applying for the mark in standard character format (word mark) or in a stylized/design format (“design mark” or “special form”). When applying for a word mark, the mark is typed out using the letters and standard characters of a keyboard.
What is a word mark?
A word mark is simply typed in standard character format without regard to the font, style, size or color. In a trademark application for a word mark, you are essentially seeking registration of the wording (or lettering) without regard to its style, design, font or any graphic features. In other words, you are protecting the wording, and not the logo.
Registration of a word mark provides broader rights and basically protects the wording of the mark regardless of its style. Thus, applications for word marks must include a Standard Character Claim: “The mark consists of standard characters without claim to any particular font, style, size or color.”
Applying for a word mark means you can vary the design aspects of the mark (e.g., style, upper/lower case, font) in use without causing a conflict with your trademark application.
A trademark application for a word mark provides more flexibility in terms of how the trademark owner may use the mark to support the application, or renew a registration. As long as the spelling in the usage of the mark remains the same as the mark applied for, a trademark owner may support its pending application or renew a registration with such usage.
What is a design mark (special form)?
If you want to protect a graphic design or image with or without wording, such as a stylized logo, then you would apply for a design mark. This is also known as “Special Form (Stylized and/or Design)” on the USPTO initial application online form.
A design mark application would be appropriate for a distinctive logo with particular graphics and/or stylized wording. Keep in mind that a registration of a design mark requires you to use the exact same design over the course of the next several years in order for you to maintain and renew your registration. Changing the design may warrant the filing of a new trademark application. A word mark registration, on the other hand, allows you to use the mark in several different designs so long as the wording (e.g., spelling, number of words/terms, etc.) remains the same.
Trademark in color or black-and-white?
A design mark application gives you the option to claim color. If color is not claimed, you must file a black-and-white drawing of the mark, but that does not mean your usage of the mark must only be in black-and-white. By not claiming color, you are free to use whatever colors so long as your usage is a substantially exact representation of your applied-for mark. If color is claimed, you must file a color version of the mark and the colors in your actual usage must exactly match those colors in the applied-for mark.
Filing separate applications for both word mark and design mark
Of course, if your mark includes both wording and stylistic elements, consider filing two trademark applications – one as a word mark, and the other as a design mark – but not necessarily at the same time. You can choose to register one version of the mark before applying for the other.
Do uppercase or lowercase letters matter in a word mark application?
In a trademark application for a standard character mark, it does not matter whether the letters are drawn in uppercase or lowercase letters. Historically, old school trademark applications for word marks were filed on paper with the USPTO showing word marks in ALLCAPS. The significance of all capital letters served to indicate that registration was sought for the wording, regardless of the upper/lower case of the letters.
Vic Lin
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