How should you file your trademark application?
A word mark refers to the type of trademark that can be registered without any graphic design or stylization. Also known as a standard character mark, a word mark is typed out in your trademark application. In use, however, a word mark does not necessarily mean that the trademark must avoid any stylization. Nearly all trademarks in usage have some degree of design. Filing a trademark application for a standard character mark means that you seek to protect the underlying wording regardless of design.
The “drawing” in a word trademark application will comprise standard characters that are typically found on a keyboard. As shown in this standard character set, certain symbols may also be included in addition to letters (e.g.: ! ” # $ % & . . .).
Need to file a trademark application? Email Vic at vlin@icaplaw.com or call 949-223-9623 to find out how we can help.
How do you show use of a word mark?
Use of the mark as applied for must be shown in connection with the goods or services identified in the application. Specimens of trademark usage can be submitted upfront or after the initial filing. It is critical to show the exact spelling of the mark on specimens that matches what was applied for.
Use of the mark may include stylization, different fonts, graphic design elements, variations of uppercase and lowercase letters, etc. The important thing is that the wording in usage matches the standard characters in the trademark application.
How you do renew word trademark registrations?
The same principle applies to maintaining or renewing a word mark registration. It is not uncommon to change the wording by adding or removing terms. If that happens, you should consult with your IP attorney to see if it would be advisable to file a new trademark application to register your new version of your trademark.
When would a word mark application be unacceptable?
Not all trademarks can be registered as word marks. A stylized logo that contains a letter or number drawn as an object, for example, must be filed as a design mark application with a special form drawing. For example, if your mark replaces the letter “i” with a picture of a human or tree, or the letter “o” with a picture of a round object, then you must file a design mark application.
Do word mark registrations provide broader protection?
Generally, word mark registrations provide trademark owners with broader IP rights in at least a few different ways. A registered word mark would block future applicants from registering trademarks that have similar wording. Future applicants would find it challenging to argue differences in style since a standard character registration omits style altogether.
A word mark registration also gives the trademark owner more flexibility to change the design features of the mark in use. Fonts may vary. Graphic design elements may come and go. Through all these stylistic changes, an owner of a registered word mark may be able to continue renewing the registration so long as the characters/wording stay the same in the mark as used.
Can a trademark be registered as both a word mark and design mark?
Yes, it is possible to register the same trademark in both wording and design. In fact, it’s done all the time. The extra protection of a design mark registration gives the trademark owner rights to block competitors from registering or using a similar looking mark even if the wording is different.
