A trademark is a word, symbol, or phrase that identifies the source of an entity’s goods or services. Applicants seeking to acquire a federal trademark registration with the United States Patent and Trademark Office must choose from several types of marks. In fact, a trademark applicant can choose between a character mark or a special shape mark, which includes a stylized mark, a logo, or a design mark plus words. While a federal trademark registration certainly has intrinsic value, it is imperative to understand what type of mark will provide the applicant with the best trademark protection and enforceability.
A character mark is a mark composed solely of words, letters, numbers, or a combination thereof. It does not contain any particular stylized design, color or image as part of it. An applicant who successfully obtains a trademark registration for a character mark will have the exclusive right to use that mark in connection with the goods or services listed in the application. A character mark often provides the broadest and greatest protection to its owner because it allows you to limit someone else’s use of any mark that is confusingly similar to your mark. The word or words are protected, and the owner can use those words in any way and in any medium, as long as it serves a source identification function as a trademark.
A special shape mark, also known as a stylized and/or design mark, must be used to register a mark that is made up of stylized words, letters and/or numbers and/or has a design element. If the trademark owner wants to not only protect the characters but also the design, color or some other distinctive element such as a logo, a special shape mark is required. This type of mark is commonly known as a more word designer mark. An example would be where Nike has the swoosh and below the swoosh is the word Nike. An applicant should consider registering a plus word design mark when their mark contains both an image and character component. However, if that image changes in any way, the record loses its applicability to some degree as far as that exact record is concerned. For this reason, it is sometimes advisable to look for a character mark for the particular words associated with the design plus the word mark to provide the broadest protection. For example, although a design mark plus words provides protection for the words themselves, it is only as part of the full mark that registration of the mark adds benefit.
A special shape mark also cannot include words, letters, or numbers. A special shape trademark registration could be a logo itself. In such a case, there are no words included as part of the mark. An example would be the Nike Swoosh. This particular type of mark is valuable, but if the owner modifies the logo in any way, the trademark registration pertaining to the original logo loses its applicability and possibly its value. As such, trademark owners would do well to apply for a new trademark or service mark registration when the logo changes substantially. Ultimately, the mark must be distinctive to achieve registration. Therefore, sometimes the words themselves cannot be protected through a character mark, rather the design mark plus words provides the distinctive character necessary to achieve a registration with the USPTO.
Given the various types of trademark registrations, a trademark applicant must consider the various ways in which they will display their mark when selecting which type of mark will provide the best protection. If the applicant will be using the characters in some type of document where there will not be a stylized image or design, the character mark would be most beneficial. However, there are obviously times when both the characters and the design will be used together, and in that situation, a design mark plus words provides the necessary protection. An applicant should remember that their logo mark or design mark plus words may not protect the mark after changes have been made, so another filing with the USPTO is required. Either way, it’s critical to make sure your marks, regardless of type, are registered and enforceable.
An experienced trademark attorney will be able to better advise you on which trademark to choose. Numerous factors determine whether a character or design mark plus word mark, for example, may be advisable. For example, a mark may have already been filed and/or registered with the USPTO that would preclude a character mark due to the likelihood of confusion. However, the additional design feature of the mark will not only make the mark distinctive but also distinguish it from the existing filing and/or registration so that you are entitled to a trademark registration with the USPTO. Again, these issues will be identified by an experienced trademark attorney through a trademark release or during initial registration discussions.