The most common question we receive regarding trademarks involves whether a party should file a trademark application for either the (1) word mark or the (2) design mark (also called stylized or specialized marks) or (3) both? The response to this answer depends on a couple of factors as each type of filing comes with its own set of benefits. A trademark application for a standard character mark claims ownership over the word itself, for example the name of the company “Starbucks.” A design mark on the other hand claims ownership over the graphics and design elements such as color, font, size special, for example, the Starbucks green mermaid. Each type of filing requires its own separate trademark application.
Benefits of Standard Character Marks
A standard character mark by far provides the broadest amount of protection and flexibility. This type of application does not claim ownership of any particular, font, size or color just the literal elements of the word itself. By not claiming ownership over any aesthetic elements, a trademark owner is permitted to use the standard character mark in any font, size or color without implicating its trademark rights. This provides trademark owners with tremendous flexibility over how they choose to stylize their mark during the life of the mark. Keep in mind however, that the spelling of the mark must remain the same as how it was filed every time it is used in commerce in order to preserve proprietary trademark rights.
Benefits of Design Marks
An application for a design mark is appropriate for parties looking to protect any graphic or design elements of the mark, e.g. their logo. Opposite of its standard character counterpart, design marks must be used in the exact same way each time it is used in commerce. This means that all colors, designs and fonts must remain the same as how it was originally filed. For this reason, design marks do not afford trademark owners much flexibility. Despite its rigidness, design marks are extremely useful for differentiating your brand and creating an impression in the mind of a consumer. Take for example, Apple, McDonalds and Facebook—three brands with distinctive design marks: a bitten apple, golden arches in the shape of an “M” and a blue lowercase “f”,” respectively. These design marks can be placed on any product or service and the consumer would immediately recall the name of the company. Achieving consumer recognition is after all, the goal of trademark owners.
When deciding which application to choose, below is a list of questions to consider:
- How distinctive (unique) is your standard character mark?
- How tied are you to this particular design?
- Do you anticipate changing the design of the mark shortly after initial use?
- Did you contract a designer to create your logo?
- Will you use the words without the design more often the design?
- Does your design mark accurately reflect the ethos of your company?
There are various considerations to keep in mind when starting your trademark portfolio depending on the stage of your business and the amount of resources already invested into your brand. There may be situations where one filing is more beneficial than the other, however this decision is particular to each businesses. Please contact us if you need assistance with your trademark strategy.