Comprehensive Trademark Protection: Understanding Word Marks, Word and Design Marks, and Design Marks
Understanding the different types of trademark applications is important for obtaining the strongest protection for your trademark. Trademark protection is available in various forms, each serving a unique purpose and offering different types of protection. This article will explore the differences between a word mark and a design mark, using examples from my law firm, WELSH IP LAW. We will also discuss the distinctions between color marks and black and white marks and provide recommendations on filing strategies.
1. Word Mark Application
A word mark application, also referred to as a standard character mark, protects the literal elements of a brand name, without regard to style, design, or color. For example, the word mark “WELSH IP LAW” protects the name itself. This type of mark offers broad protection because it covers the text in any font, size, or color. It allows the owner to use the trademark in any stylization or different stylizations while satisfying federal use requirements. Additionally, it allows the owner to assert its registration against infringing use regardless of text, size, or color.
If you are considering only one trademark application or have a limited budget, it is recommended to file a standard character trademark application because it provides the most comprehensive protection, encompassing the brand name in any font, size, or color.
2. Design Mark Application
A design mark protects only the visual design elements of a brand, without any accompanying text. For example, a stylized roller bearing chain on its own would be a design mark. This type of mark is particularly useful for logos or symbols that are distinctive and recognizable independently of the brand name. It offers flexibility in use because it protects the design in any context, regardless of any accompanying text. This provides the owner with flexibility in how it uses the design. For example, the owner may use the design adjacent to a word mark in some materials and separate from the word in other materials while still maintaining their rights.
3. Word and Design Mark Application
An application for a word and design mark, also referred to as a combined or composite mark, protects the visual design elements of a trademark in association with text. For instance, “WELSH IP LAW” combined with a stylized roller bearing chain would be considered a word and design mark. This application protects the specific design in association with the text. While it provides protection against unauthorized use of the design alone or text alone, the scope of protection is narrower.
It is important to consider use requirements when filing a word and design mark because the owner is required to continue using the identical version of the applied-for trademark. If the owner changes the design, text stylization, or the position of the design and text, it will be difficult to renew the registration. This means that significant modifications might necessitate new filings to maintain comprehensive protection.
4. Color Claim vs. No Color Claim
A trademark application claiming color versus an application not claiming color offers different scopes of protection.
A color application claims specific colors as part of the trademark and is thus more limited. For example, if the stylized roller bearing design was registered in blue and white, the protection would be limited to the use of those specific colors. On the other hand, a black and white mark does not claim any colors, providing broader protection. It allows the owner to use the trademark in any color, offering greater flexibility and making it easier to enforce against infringing uses in any color scheme. Not claiming colors in a trademark registration can reduce the defenses available to potential infringers. For instance, those using a similar logo won’t be able to claim they use different colors from those in the registered trademark.
Given these considerations, it is highly recommended that clients first apply for trademark protection in black and white. This approach ensures the broadest possible scope of protection, allowing the trademark to be used and defended in any color variation.
5. Strategies for Trademark Protection
To ensure comprehensive protection for a brand, it is recommended to file both a word mark and a design mark. For WELSH IP LAW, this means filing a first application for “WELSH IP LAW” as a word mark and filing a second application for the stylized roller bearing chain as a design mark. This approach provides broad protection for the brand name and the visual elements independently, offering greater flexibility in enforcement and use. By filing a design mark for the stylized roller bearing chain, WELSH IP LAW ensures protection for the logo in any context, regardless of the accompanying text. This is particularly useful for maintaining brand recognition and protecting the visual identity of the brand.
The application to register the design mark is without claim to color, or in black and white, offering the widest scope of protection. Unlike color mark applications, which claim specific colors, trademark registrations without claim to color offer broader protection. This makes enforcement simpler and more effective, as the trademark owner does not need to address the use of specific colors in potential infringement cases.
Welsh IP Law helps companies protect their intellectual property. Its clients include Fortune 500 companies, global brands, family businesses, and start-ups. Contact Walter Welsh for a courtesy consultation.
[email protected] – 203-321-6303 – linkedin.com/in/wwelsh
