Written by Brandon Zuniga
You’ve created an amazing new product and your mind has drifted to marketing: catchy names, more fonts than you knew existed, and striking designs. As the perfect logo finally takes shape, another thought crashes through your mind—knock-offs. How will you stop them? If an answer like trademarks comes to mind, you are already ahead of the game. But, where do you go from here?
Well, rather than going anywhere, it could actually be helpful to first consider your options. In particular, you should consider the difference between basic word marks and design marks.
For example, if your logo includes an awesome design or original font, wouldn’t it make sense to file a design mark? Maybe. But, it is actually quite possible that filing a basic word mark is better.
What Are the Advantages of Basic Word Marks?
Unlike design marks, basic word marks are directed to letters, numbers or words without regard to font style, size, color or any graphics that might be used with the mark. (See, e.g., 37 C.F.R. §§ 2.32(a)(8), 2.51, 2.52.) This is advantageous for several reasons.
For example, if you make changes to your mark occasionally, but continue to use a particular word, then a basic word mark registration would likely apply to the new mark as well. In contrast, if you register a font-specific mark, and if the the font later changes, the font-specific mark could fail to protect your new mark.
As another example, if you have a valid word mark, you can prevent a competitor from using the same word to identify the source of the same or related goods in commerce. (See 35 U.S.C. § 1114.) This is true even if the competitor’s mark includes a different design than your word mark. This is because word marks cover the word, apart from any accompanying design.
In contrast, if you have a design mark directed to a stylized word, a competitor may be able to use the same word on related goods. This can occur if the styling is different and as long as consumers would not be confused about who supplies the goods at issue.
What Are the Advantages of Design Marks?
So, you may ask, what is the point of a design mark if a word mark can give me broader protection? Well, there are actually quite a few possible advantages.
First, imagine that you’ve come up with a great logo and want to protect the logo with a word mark—only to find out that someone else has a similar mark for somewhat related goods. Although you’ve spent time and money developing the mark, you are now unsure if a basic word mark would be allowed. (See 35 U.S.C. § 1052(d).) Under these circumstances, it can be safer to file both a design application and a basic word mark application.
Second, a design mark, such as a logo, can be stronger or more distinctive than a word mark. For example, if a word mark includes descriptive terms, competitors may argue that they need to use similar terms to describe their own goods. However, with respect to a logo, it is harder for a competitor to argue that they had to use a logo that was like yours.
Third, if you use a logo without any words, for example, Apple’s logo for computers and phones, it can be desirable to file an application for a design mark.
Have Questions About Choosing the Right Mark for You?
If you are wondering whether your design mark can be protected or whether it might infringe an existing trademark, it can be helpful to contact an attorney and consider conducting a trademark clearance search. Ultimately, choosing the right mark can save you from wasting thousands of dollars on dead-end advertising or, even worse, winding up on the wrong end of a lawsuit.