Let’s start with the basics: what is a trademark? Fundamentally, a trademark is something (a word, phrase, design or logo) used to identify and distinguish the goods or services of one company from those of another. A trademark need not be registered with a state or federal government in order to be recognized. Rather, trademarks arise when an individual or company comes up with a unique mark (emphasis on unique) and begins using that mark in connection with the sale of their goods or services. While registration isn’t required, there are significant benefits to doing so – more on that below.
Standard Character Mark v. Design Mark
Many businesses these days have both a name and a unique logo that are used to signify the company’s brand to potential customers. A business name or slogan can be registered with the USPTO (United States Patent and Trademark Office) as a “standard character mark”, which is any combination of letters and numbers that identifies the brand without reference to style, design, font or color. The trademark rights in a standard character mark reside in the wording itself rather than the style.
Generally speaking, a standard character mark offers the broadest possible rights of any single form of trademark protection. It will provide protection for the name of the business or the slogan for the company, and grants the holder of the trademark the exclusive right to use the name/slogan in any form in connection with the particular goods or services identified in the application.
Businesses can also register a “design mark”, which protects a specific combination of stylized letters or design elements, such as logos. Typically, this will be a trademark for the black and white version of the company’s logo so that you have protection over any color variation. A design mark is great for companies that need to protect a distinctive visual aesthetic, but its protection is more limited. A design mark protects only the particular style or aesthetic registered. If you want to make a design change, you’ll need to file again.
Registering your Company Name v. Company Logo
The general consensus seems to be that higher value accompanies brand name recognition rather than logos, which change more often than names. So, in most cases, registering the business name as a standard character mark is the best bet. Remember that name registration through a standard character mark allows you to preserve near-total control over your business name.
Because standard character marks protect the “mark” in any font, size, style, or color, if your logo also contains the name of your business, then nobody offering the same goods/service would be able to copy your logo without infringement, even if you only registered your standard character mark.
Benefits of Registration
Trademark protection arises without filing any paperwork, but registration does impart additional rights in the mark. For one, the owner of a registered mark can pursue additional damages against any personal or company who infringes on the registered mark by using a same or similar mark on the offending party’s goods. Additionally, federal registration provides protection for your registered mark throughout the entire country - even if you only sell goods or provide services in a single town in one state. By contrast, a state trademark only imparts rights to your immediate geographical area.
For example, if you only operate your business within the city of Bend, Oregon, and you obtain a state registration in Oregon, a subsequent filer for a federal registration on the same mark will prevent you from using your mark outside of Bend, and the subsequent filer could use the mark to the exclusion of all others anywhere in the country – including Portland, Oregon.
Before filing an application either in one state or federally, it’s important to read up on the benefits and the process, and conduct a trademark “knock-out” search to make sure that someone has not already filed an application for the same or similar mark. If you are interested in filing for a trademark application or simply have questions about the process, please contact us. We’re happy to help.
Comments