When submitting a trademark application for your business, it is important to decide whether to submit a Standard Character Trademark (aka Word Mark), or should you register to trademark a logo or design mark. Clients regularly ask which of these they should apply for to get the best protection for their brand.
- When registering a trademark, the value and broadest protection is with a Standard Character Trademark
- People say words, they type words into search engines, they fight over brand names. (Standard Character Mark)
- People do not speak logos, and you can’t search for a business by its design mark (logo). (Design Mark)
Usually, I advise that first you register the mark as a standard character trademark, if possible. Standard Character marks cover the word(s) and provide the broadest form of protection compared to design or logo versions of your trademark. Standard Character Marks cover (provide protection for) the words shown in a stylized design mark or logo – no matter how it looks. Any design or logo that contains the registered word(s) is protected by a standard character mark. You can use any design / logo to show proof of use to the Trademark Office, as long as it contains the registered name / words.
On the other hand, design marks, or logo trademarks, often change over time. A registration for a design mark or logo only covers the particular design submitted. Consider, for example, when the owner changes the look of a logo. If significant changes are made, the new logo version must be registered. It is possible that the old logo trademark registration will not cover the new logo. Also, the trademark office may not renew the logo registration if the design has changed. If you had a Standard Character trademark registration, changes in logo design would be covered.
What we mean by “covered” is that, when submitting the specimen of use, any logo or design mark that includes the words will be accepted as proof of use. Proof of use is required for all US based trademark applications. If you filed an intent to use trademark application, proof of use will be required after the Notice of Allowance.
Proof of use is also required when renewing trademark applications for design marks and standard character marks. The Section 8 and Section 15 declarations are due 6 years after the trademark is registered. The declarations require proof of use. So, if you registered a Standard Character mark, any design mark that includes the words will be accepted as a specimen of use. However, if you registered a design mark, and your design mark (logo) changed over the years, it will not be acceptable as a specimen of use for the renewal. This happens often, as owners tweak their design marks over time.
Similarly, at 10 years after the registration date, a Section 8 and 9 renewal filing is required. The combined Section 8 & 9 trademark renewal filing requires proof of use. The TM office will compare the specimen of use of the design mark with original registration, if they don’t match, the renewal application will be rejected. If you registered a Standard Character mark, any design mark that includes the words will be accepted as a specimen of use.