Choosing Your Trademark Application: Word vs. Design Trademark Registration

trademark applicationYour business plan is set.  You’ve thought long and hard about what your business name should be.  Now you’re ready to trademark your business name.  You begin your trademark application and lo and behold there are two options for filing your trademark – standard character mark and stylized/design mark.  So which should you choose?  If you aren’t concerned about protecting any distinct look or style for your business name, then you might consider going with the former.  If you have a logo or a stylized font or script that you want to use together with your name, then you might consider the latter option.  Of course, there is more to the decision than merely deciding if you only need to protect a word or slogan or if you also need to protect design aspects of your trademark; so you should seek the advice of a seasoned trademark lawyer.

The USPTO defines a standard character mark (e.g., a word mark) as “a mark that is comprised of word(s), letter(s), number(s), or any combination thereof, with no design element and which does not claim any particular font, style, size, or color, and absent any stylization or design element.” Sounds pretty vanilla, but this might be the right option for you. If you are starting a new clothing company and want to call it “Patchwork Designs” you could file a trademark application for a standard character mark and protect the name “Patchwork Designs” in whatever form it was used. If someone started marketing clothes using the name “Patchwork Designs” in red, cursive script, you could bring a trademark infringement action against them even though you only filed for a standard character mark. It shouldn’t matter how “Patchwork Designs” was displayed, a standard character mark trademark registration generally affords broad protection over the trademarked name.

A stylized/design mark (e.g., a design mark) is “a mark that is comprised of stylized word(s), letter(s), and or number(s), and/or a design element. The design may appear by itself, or combined with word(s), letter(s), and/or number(s).” This is probably more of what a lay person thinks of when he or she thinks of trademarks. You can imagine McDonald’s Golden Arches or Apple’s bitten apple logo. Going back to the “Patchwork Designs” example, you might design a logo that turns “Patchwork” into a stylized patchwork quilt with some color and flair that gives a distinct look to the brand name. In this case, you may want to file a trademark application for a stylized/design mark to protect the look of your logo. If someone was using a logo or design that was confusingly similar to your trademark, a design trademark registration would strengthen your ability to bring an infringement action against them even if they did not use “Patchwork Designs” in their mark. Such an action helps to prevent the public from being confused about the source of the goods.

You should remember that there are numerous other factors to consider when choosing between a design mark and word mark trademark registration filing, including prosecution strategy, other preexisting registrations, and costs. Depending on your overall business objectives, you might file for different combinations of standard character marks and stylized/design marks. Keep in mind that the USPTO charges you separately for each trademark application so cost could be a factor. It is a good idea to consult an experienced trademark lawyer to help plan your filing strategy.