Trademarks: Why Registering Your Design or Logo May Not Protect You

What are the differences between “special form” (stylized, design, logo) trademarks and “standard character” (word) trademarks?

The 2 basic trademark types are these: (1) “special form” trademarks and (2) “standard character” trademarks. A “special form” trademark that consists of stylized words, letters, numbers and/or a design element such as a logo. A “standard character” trademark consists only of words, letters, or numbers, with no stylization, color or design element.

The issue comes up this way: A company or an individual wants to trademark a brand or company name. So far so good. The first question is does this individual or company have a particular design or logo for its name? If not, then the only type of trademark registration available is a “character” or word mark. If a design or logo is in the mix, then the question is whether or not that design or logo has any value to the company. Obviously examples are the Nike “swoosh” and the Coca-Cola script logo. These are good examples of designs or logos that – separate from the names of the companies themselves – have distinct trademark value for their owners.

Here are 3 situations where a logo may have no particular immediate value to the company, and therefore no particular trademark value:(1) There is nothing unique about the design or logo. Technically, a “stylized” trademark includes anything beyond just the name itself. But a rendering of the name in italics or a particular color or in a common geographic box – or any of these things without more – would not typically be the subject of trademark because there’s nothing unique about the design.

A case in point: The maker of Georgi vodka began distributing an orange-flavored vodka in 1996, marketing the vodka using a “large elliptical ‘O’ appearing below the ‘Georgi’ logo”. Bacardi later came out with its own orange-flavored rum, also using the large elliptical ‘O’ in its marketing and product branding. In the ensuing litigation, the court noted that “Common basic shapes or letters are, as a matter of law, not inherently distinctive. However, stylized shapes or letters may qualify, provided the design is not commonplace but rather unique or unusual in the relevant market.” Star Indus. Inc. v. Bacardi & Co., LTD., 412 F.3d 373 (2d Circuit, 2005).

(2) Even if the design or logo is threshold-level unique, there may be no particular association in the marketplace of the design with the trademark owner. A simpler way to think about this is to ask whether the trademark owner would expect that its market would come to associate the particular logo or design with the trademark owner. A case in point: A services firm like a law firm or accounting or consulting firm, where the name itself – rather than the design or logo – is the “brand”.

The question is, what is the value that the trademark owner seeks to protect? Is it the name of the company? Is it a particular logo or design associated with that name? How will the business be marketed, and how will the market come to associate the name with the company – via the name itself or via the logo, or both?

(3) Unless the logo or design incorporates the name within the design (commonly referred to as a “design plus words mark”), a stylized trademark registration will not obtain protection for the name itself. And even to the extent that a stylized mark registration incorporates the name and does protect the name, the strength and value of that protection may be limited.

Among registered trademarks for “Coca-Cola”, the iconic script logo has long held registration status. Nonetheless, the Coca-Cola Company also has trademark registrations (numerous ones, in fact) for the name “Coca-Cola” without the design. Arguably, the stylized logo registration grants adequate protection for the name itself, but not necessarily. Technically, trademark rights in the name itself are tied only to the design. To the extent the name is used separate from the design, protection is either more limited. Of course, at that point, the illustrative value of a “famous” trademark like “Coca-Cola” is limited, because the name itself has acquired marketplace recognition well beyond the logo and, in any event, the company separately registered the character mark years ago.

Two further points about this:

As Brian Hall has written, where an existing prior trademark registration might preclude a trademark owner’s ability to obtain character mark registration (based on “likelihood of confusion”), “the additional design feature of the mark will not only make the mark distinctive but distinguishable from the existing filing and/or registration so as to entitle you to a trademark registration with the USPTO.” So, it’s possible to use the availability of a stylized filing to get a mark where you couldn’t otherwise get one.

As another commentator, JSonnabend, has noted,  “if the stylization is modest, registration of the stylized word mark (so to speak) still gives a great degree of protection for the brand name”. The point is, as with all things trademark, the more distinctive and distinguishable the trademark – whether a character alone or a stylized design – the greater the strength (and value) of the trademark. So, as noted above, a particularly unique logo can qualify for trademark registration even where the design includes a word that is otherwise registered by a previous owner. But, the price of obtaining that kind of registration is that the protection for trademark really won’t extend to where the name is used separate from the design. On the other hand, where the stylized trademark meets the distinctiveness threshold but is not overly distinctive, registration of a logo that includes the word mark can provide decent protection for the word mark alone.

(Image courtesy of Flickr user verbeeldingskr8 licensed under a Creative Commons license.)

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