SUB CATEGORIES OF IP

Obtaining a federal trademark registration is in many ways similar whether you are applying for what is called a “word mark” or a “design mark.” However, there are some important differences and practical considerations that are helpful to understand before moving forward with the process. After all, every major action taken at the United States Patent and Trademark Office (USPTO) will cost the applicant something, so it is important to try and get it right the first time to avoid unnecessary fees.

The trademark registration process begins with identifying what the mark itself will be. While “word marks” are simply trademarks consisting entirely of the word itself, e.g. MCDONALDS, a “design mark” is more specific. For example, a “McDonalds” mark with the lettering used on the drive-thru McDonald restaurants complete with golden arches and all would be a “design mark.” Thus, these design marks protect more than just the use of a particular word as applied to goods in a particular market; they also protect the way in which those words are written when applied to goods in that particular market. That said, the design mark must be relatively unique or it will be denied registration by the USPTO. In a recent case, the USPTO did exactly that because the design mark proposed was too similar to what the standard word mark would have looked like to warrant protection.

There are also a few practical considerations to bear in mind when choosing whether to file a design mark or a word mark. Whether it be for the word mark or the design mark, the USPTO will require the applicant to provide a specimen of use in order to show that the mark being claimed is currently being used in commerce. Thus, the applicant will have to show a picture of some kind displaying the mark as it is being used. If the mark is being used in all sorts of different designs and styles, it might be more efficient to simply file for the general word mark, as that will cover all the different styles and designs being used. Alternatively, if a company only used one kind of design and had specimens of that design ready for submission to the USPTO, then a design mark might be more practical. Prospective applicants should note that design marks can include both words and designs to go with them, but these separate images must be displayed as one when the application is submitted. Furthermore, color may be important to the design mark, and in such cases a copy of the complete logo with the correct colors must be submitted to the USPTO as well.

Although filing a trademark application may not seem like an overly burdensome task, the devil is in the details, and often questions as to whether a work mark or a design mark is the best move for the business, and the best bang for your buck are questions best left to licensed trademark attorneys to answer.