Registering your Trademark: Standard Character Mark or Stylized Logo?
Whether you are just starting your business or getting ready to expand, one of the most important assets you have is intangible. That’s right- intellectual property. And one of the keys to protecting your business and image is by properly Registering your Trademark. (Keep in mind that Trademark Registration fees changed January 2015).
One of the first decisions you must make when registering a trademark is whether to register your mark as a “standard character mark” or as a “stylized logo.” Choosing correctly—or incorrectly—can have important effects on the strength of your mark. Now, chances are you are not a lawyer and don’t have to review these options every day, so this post will highlight the differences between Standard Character Marks vs Stylized Logos so you can make a better informed decision.
Standard Character Marks
The Standard Character Mark (also known as a word mark) is used to register words, letters, numbers or any combination thereof. However it does not lay claim to any particular font style, size, color or design element. In other words, a single word mark protects the phrase regardless of how the words are displayed.
Word marks provide broad protection of the word or phrase, regardless of how it is used. For example, a word mark on “Law 4 Small Business” would protect the phrase “Law 4 Small Business” in any font, size, or color. It would cover the phrase even when combined with graphics or in logos, such as in the “L4SB” logo in the upper left corner of this blog. It also help prevent certain types of domain squatting.
Stylized Logos
The stylized logo (also known as a design mark) is used to register words and/or letters having a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and design. In other words, a design mark can protect a logo with or without words. The Nike Swoosh, for example, is a design without words. The same swoosh with “Nike Air” next to it is a design mark with both words and images. The words “Nike Air” in a particular color and font would also be a design mark.
Generally, owners of design marks are not free to modify the mark. For example, changing a design mark could make the mark impossible to renew, because renewal requires continuous use of the design as it was registered. Instead, a person who changes a design mark may have to file a new trademark application. And, although greater weight is often given to the words than to the design, the design still comes into play in determining whether a competing mark too similar to a registered mark—that is, design marks can be interpreted to be limited, to some extent, by their logo, graphical or stylistic elements.
Which should you choose?
As a general rule, if your logo contains a word or phrase, you should register the word mark if possible. A word mark offers the broadest protection. It will allow you to change your logo without applying for a new mark. It will also provide the broadest protection against infringers.
Word marks are also preferable if you are filing an “Intent to Use” application. An ITU application can be filed by a person who has not yet used the mark in commerce, but who intends to. Often, a person who has not used the mark will not be able to submit a “specimen,” which is a picture of how the mark is or will be used in commerce. For word marks, however, the specimen is the phrase itself, and an ITU applicant will have the freedom to use any design or arrangement containing that phrase.
Of course, if your mark contains no words, you must apply for a design mark. Similarly, if your mark contains words but the words cannot be protected (for example, if they are descriptive or generic), or if the design elements are particularly important to you, it may be worth applying for the design mark. If your mark contains words and images, it may make sense to apply for both a word mark and a design mark.
These are just some of the factors to consider when registering a trademark. You should talk to a trademark attorney to understand which types of protection are best for your business. Feel free to contact us with any questions.
Law 4 Small Business. A little law now can save a lot later.
33 Comments
Hello,
I registered my trademark Sheilé. Is the actual name protected aside from the accent mark on the last e?
Thank you,
Sheila
Hi, Sheila.
I sincerely apologize for the delay in responding to you. Our system doesn’t always alert me to certain posts, although it does to others. I’m just going through the system now, and finding a good number of questions I’ve failed to respond to. Again, my apologies.
I have NOT researched your specific trademark, but what I will say is that if your trademark is properly registered by the USPTO, then that trademark is protected against any infringing marks that could “create a likelihood of confusion.” We have a blog article that discusses this, located here. The short answer is that with or without the accent mark isn’t going to make a difference on whether another mark is infringing on yours.
Larry.
Hello-
The words “The Original” has been trade marked for use in clothing (IC 025. US 022 039. G & S: Tops for babies, children and adults; Baby bodysuits) with a standard character mark. Is this correct and if so can you just trademark any words (if not already trademarked) for example Sunshine for use on clothing?
Hi, Kali.
I apologize for the serious delay in responding to you. I didn’t get the announcement you had submitted a comment — I just happened to notice it, while replying to other comments.
At any rate, the answer is you can certainly trademark words. It’s called a WORD MARK. Now, you cannot trademark just any words. There are many, many rules on what you can and cannot trademark. For example, you cannot trademark generic or descriptive terms. For example, you couldn’t trademark “Albuquerque’s Best Hamburgers” for a hamburger stand in Albuquerque, NM, (that would be “geographically descriptive”), nor could you trademark “Albuquerque’s Best Hamburgers” for a hamburger stand in Buffalo, NY (that would be “geographically misdescriptive”), but you could trademark “Albuquerque’s Best Hamburgers” for a computer company.
Confused yet?
“The Original” that is used in a way that is not descriptive, or violative of other rules, would certainly be permissible as a trademark. But, trademark law is very complicated. Trademark law doesn’t permit people to create a lock on the English language. You can certainly use words to describe your product, as long as you don’t create a “Likelihood of Confusion.” The trick is to not use “The Original” as a source identifier for your products. For example, if you wanted to produce something that really was an original of something, you can certainly use the words “The Original” in describing your product, even though it was trademarked.
Same thing with Sunshine, assuming it is not already trademarked.
Larry.
Question,
The owner of trademark number 4382314 (US Serial Number: 85649534), they have STANDARD CHARACTER MARK
for “I LOVE MY MOMMY”
Right now they are claiming against my product with graphic print “I ♡ My MOMMY”
Do I really violate their trademark?
Sincerely
Sheesh. I’m sorry for the delay in responding to you, Christopher.
I didn’t see your comment until now.
The test is SIMILAR (not same) sound, look or meaning. I think your mark certainly seems not just similar, but identical, in sound and meaning. Similar in look. You have a problem on your hands, assuming you’re in their class code / industry code. Note that “Likelihood of Confusion” has a number of elements.
Larry.
Hi Larry,
I filed for my mark as Goddess Swag (mainly t-shirts) as standard character mark.
I am being opposed by the owners of mesh goddess legging, ribbed goddess legging and goddess legging -likelihood on confusion 2d.
I have been told I have a good case to win against the opposition. Never hurts to have an other set of eyes!
Do you feel they are too similar to create LOC? thank you!
Hi, KC.
I apologize for the delay in responding.
It’s really hard to say. If anything, I think the “Goddess Legging” may be your biggest obstacle, because the first word is given significant weight. Of course, you have different products, but they are “similar” in that you will generally find such products on the same floor (and sometimes, same department) within a store. This can add an additional factor in the LOC analysis.
Larry.
Hey im trying to trademark a character name and i dont have a clue on what mark i should get any help?
Hi, Raymond.
If I’m understanding your question correctly, you’re just trying to come up with an awesome name that you can trademark. If I’m understanding your question correctly, then you might want to consider a brand agency of some sort. There are actual naming companies out there, that help companies come up with great names.
I’ll admit, this is a skill that is beyond me. It’s really hard for me to come up with an awesome name, although I can see one once I see it. I just cannot think of a great name myself.
From a trademark perspective, I will say the absolute best names are those that are completely arbitrary from what they are affiliated with. Think “Amazon” for an e-commerce company or “Apple” for a computer company. These, of course, are really hard for most people to use, because they often want some sort of at least suggestive connotation of what the product or service is.
Good luck to you, and I’m sorry I cannot be more helpful here.
Larry.
Hi would like to ask about a word combo in the same categories. L’Oréal has trademarked the word “Bonbon” (4) standard caracter mark for soaps and perfumes. Can we even use th4e name :Bonbon Spoon” for the same category? So interested in your reply
Hi, Stephanie.
I doubt it, especially if your product is “similar” to L’Oréal’s. Here’s why: the test for “likelihood of confusion” considers not just “same,” but “similarity” in look, sound, and meaning of the marks, and the similarity of the products, along with other issues.
In this case, the first word of a trademark is considered significant, and slapping on another second word usually doesn’t create enough distinction for the USPTO. It does depend, however. You used the word “spoon,” and I’m scratching my head wondering what “spoon” has to do with soaps and perfumes. If “spoon” is truly arbitrary and has no descriptive characteristic of your product, then it may be enough to create a new distinctive mark. Possible. Hard to say for sure.
If, however, you have “spoon” in your mark because it describes some characteristic of your product (i.e. soaps in the shape of a spoon), then you will need to disclaim the word “spoon,” which basically means it’s not factored at all when considering distinctiveness of the mark from L’Oréal’s. In this latter case, I can definitely say you would not be able to register the trademark (unless there was absolutely no similarity between your products), and you didn’t meet the other tests in the likelihood of confusion test.
Larry.
If a trademark has been registered as design mark as let’s say GREENAPPLE, and the owner would like to also register the word mark, would it make more sense to file for GREENAPPLE (again as one word) or GREEN APPLE?
Hi, Viki.
File the word mark as it is. In this case, if the word mark is GREENAPPLE, then file as GREENAPPLE. The space really makes no difference from a trademark perspective.
Larry.
Hi!
I want to get my two letter brand name trademarked, will be using “/“ between the two letters in the logo. Should I file with or without “/“ for standard character mark?
Thanks!
I would include the “/”, only because that is part of your mark and it is a standard character.
Note that the “/” isn’t really meaningful to establish a distinction between two marks, so you’re not losing or gaining anything by adding it (or removing it).
Hi my mark drawing code is showing unknown on uspto website? It must show design plus letters
What must be the reason behind this?
Hi, Muneeb.
It’s possible the USPTO hasn’t yet evaluated your design mark. I’ve seen that happen for newly submitted trademark applications. Usually, it will clear up in 4-8 weeks. If it doesn’t, then call the USPTO and ask them what’s going on.
Good luck to you. Larry.
Hi,
It seems that more than one company may have trademarked ‘Never Give Up’ for clothing, and I am wondering how should I best go about pursuing this Brand name. Not sure if all the different versions are attached to their specific design, or if I need to stay away completely unless I add another word or something (brand/clothing/etc) to cleary set myself apart. Any advise would be great.
Thanks in advance.
Tiana
Hi, Tiana.
Thank you for your question, and this is really something you need to consult with a trademark attorney on. Here’s the problem: You’re trying to navigate the contours of what’s possible, given other users of a similar (or same) trademark. Even if you get lucky, and can navigate around this to get a trademark with the USPTO, the existing trademark holders can still sue you for trademark infringement.
Therefore, you need a trademark attorney to review everything, and see how you may be able to do this.
For example, are the other trademark holders really from different companies or are they affiliates or related somehow? If different, how are they co-existing? Do they have co-existence agreements in place? Are they disclaiming a portion of the phrase in some way? Do they have design marks that leave some room for additional users of the word-phrase?
These are all factors (and there are others) that need to be examined, to properly answer your question.
Good luck to you. Larry.
i check the phrase “It’s time”. it have trademark with single word “IT’S”. when combining “IT’s” with other word “time”, is it ok?
Doubtful, but you need to apply the full test of the likelihood of confusion. If you’re referring to other marks in completely unrelated products or services, you may be fine. If the products or services are similar, you may have a problem.
Larry.
I own the registered standard character mark “God’s Country” for use on goods and services, specifically t-shirts, sweatshirts, caps and polos. If someone uses it on a shirt like this, “This is God’s Country”, is that considered infringement because it’s combined with other words?
Thanks,
Melissa
Hi, Melissa.
There are two issues here. First, is the phrase being used as a “source identifier.” If it is, then second, will the phrase cause a “likelihood of confusion” with your trademark?
A trademark is a “source identifier.” If a phrase is being used on a shirt as a political or religious statement, as opposed to a “source identifier,” then I’m not sure you’ll be able to prevent that type of use.
If, however, the phrase “This is God’s Country” is being used as a source identifier, i.e. it’s on the tag, packaging, etc, then yes this would definitely cause a “likelihood of confusion,” in that such a mark would be similar in look, sound and meaning. The addition of the words THIS IS wouldn’t be significant enough to avoid a likelihood of confusion in my opinion.
You should definitely consult with a trademark attorney to weigh in on this, and give you a more reasoned opinion.
Larry.
Hi- I am looking into creating a social media podcast that sells books in tandem with clothing- and the name of my company has a standard character word mark already trademarked for consumer goods/kitchen suppliances. Does this fail the “likelihood of confusion”? Trying to understand how to interpret this concept and if I should continue building the brand/logo on Instagram.
Hi, Jamaal.
Likelihood of confusion can be confusing (no pun intended) and/or frustrating, because the rules are “fuzzy.” We’re dealing with what’s “similar” (not the same) in the products or services between your brand and theirs. This means coffee can be the same, when thinking about donuts. Sun tanning lotion can be considered the same, when thinking about perfume.
Can social media podcasts, books and clothing be considered the same as consumer goods/kitchen appliances? I want to say “no,” and that’s probably true. But, there’s really no way to give you a firm answer on this. Also, note that if this consumer goods/kitchen appliances brand is famous, you’re going to have a problem anyway. For example, Samsung or GE. You are not free to use a famous mark in a category they aren’t yet in. You’ll have trouble there, for sure.
Larry.
We own both a standard character mark and a design mark for the same product name. We want to change the logo design with different a completely different look, and are unconcerned if the current design mark expires or becomes invalid. Will the new stylized logo be protected by our standard character mark? Is there any possibility the new logo can negatively affect or jeopardize our standard character mark? Thanks!
Hi, Robert.
What I tell folks, is to strip out the standard character mark from their logo. Is it still distinctive? If so, then it’s protectable (assuming no likelihood of confusion with a pre-existing mark, and that it otherwise meets the other USPTO requirements). What are you protecting with the logo? Someone adopting a confusingly similar logo — without the words.
Will the new stylized logo be protected by using your standard character mark? Yes and no. The answer is, if another mark creates a likelihood of confusion with your trademarks, then yes. If you are just protecting the words (i.e. standard character mark), then you leave open the possibility of someone else using a confusingly similar logo with different words.
I don’t see how a new logo would impact your existing standard character mark, unless it was diluting it somehow. It’s best to maintain brand consistency, and don’t use different iterations of your standard character mark that are otherwise not registered trademarks.
Good luck to you. Larry.
Hi! I have some questions I hope you can help me clarify.
My logo have a specific design (in color) which I want to protect. But I have many elements to it:
I have a special font on the name (brand)
I have a slogan/tagline
an ornamentation
and an icon
I am planning to apply for a word mark on the name and the slogan. But how do I protect the total design in a best possible way? My design is new. Would it be better for me to apply for a figurative mark or a design mark? And should I apply for multiple figurative marks or design marks? What is common if you have several design elements? a combinated mark only protect the combination and not the individual elements, so that would be unwise for me I think. My budget doesn’t cover everything at once, so that is why I am asking these questions. I wish to make a strategic and wise decision.
Hope you can help me!
Thank you
Hi, Solveig.
Thank you for your question, and this is really hard to answer without seeing the design, talking to you about your future aspirations, etc.
I would recommend our IP attorney consult, which you can order from here: https://www.l4sb.com/product/trademark-consultation/.
I’ll give you an example that happened just this week: I had a client with a rather complex logo that included the company name. The problem is, the client has different font-types for the name, depending on the medium the logo is displayed. The answer here was rather simple: Register the logo as a design mark, without the name in the logo. This will only work, however, if the logo is distinct without the name. If the name is a critical and distinct element in the logo, then you need to possibly register multiple logos (although that’s not always a great idea, either).
Lots of issues here.
As it relates to figurative mark versus design mark, that’s more a distinction in the EU than it is in the US, therefore I really cannot comment on that because it’s a bit outside my area of expertise. If you care about the US, then the question is sort of mute. You need to decide what are the distinctive elements of your logo, and register the common elements or base, if possible.
Thank you. Larry.
Hi, I have a question.
Our company name contains a general descriptive term for a person in business/self-employed.
It seems someone has registered this term as a Standard Character Mark. Our company name only contains this general term. (So does thousands of other companies according to the trademark register).
Will this be a problem for us?
For clarity, our name is two-part. One one the two parts is the same as theirs. We don’t want to register the trademark, but also don’t want to be in trouble.
Hi, Nellis.
It’s hard to give you a good answer without knowing more details, but I can tell you this.
Let’s suppose your company made sandwiches, and called yourselves “Larry’s Sandwiches”.
Because you’re a sandwich shop, the “sandwiches” is a descriptive term. For trademark purposes, pretend it’s not there at all. What’s left? “Larry’s”
Are there other trademarks with “Larry’s” in the name? Well, if there’s one in computers, then you’re probably going to be okay. If, however, there is one or more in food items, restaurants or a business “similar to” a sandwich shop, you will probably have a problem on your hands.