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The most common trademarks that you are going to encounter in the marketplace are designs (usually called “logos”) or words, or some combination of the two. Besides the obvious aesthetic difference between design and word marks, there are some other more substantial yet subtle differences.
In some cases, the biggest difference between the two is registrability. Design marks are usually – but not always – more likely to be considered unique or arbitrary than word marks (which commonly are considered to be descriptive or suggestive.) On the scale of trademark legal strength, you want your mark to be on the arbitrary or fanciful end of the spectrum rather than the suggestive or descriptive end. Arbitrary and fanciful marks are afforded stronger legal protection and are usually more likely to be registerable.
However it is not the case that word marks are always weak and design marks are always strong. Word marks can be legally strong too. For example, words that are completely made-up (such as Exxon or Xerox) or bear no relevance to the goods they identify (like Apple for computer products) are given a high measure of legal protection. Conversely, design marks that feature images that essentially describe the goods or services with which they are associated are not legally strong. A stylized drawing of a piece of pizza used as a design mark for a pizza restaurant is going to be considered descriptive of the restaurant’s services, even if the word pizza does not appear anywhere in the mark.
Another difference between word and design marks is that it is generally easier to conduct a trademark search for a word mark than a design mark. It is standard practice to conduct a search prior to filing a trademark application or using a mark in commerce. Variations of word marks can be easily included in a comprehensive search. Design marks, on the other hand, are notoriously difficult to search for since you must first determine the design elements that make up the design mark. The USPTO has a dizzying compendium of design codes for just about any design element and finding the right one or ones to apply to a design is no easy task. Even after finding the design codes, searching for other marks with the same design codes is tricky, and you may not find all of the marks that may potentially present a problem.
The arguments that must be made to overcome a refusal from the US Trademark Office differ slightly for word marks vs. design marks. If your design mark application is rejected based upon a likelihood of confusion with another mark, you typically must build your response around the ways that the similar visual elements are expressed in different ways. To overcome a similar refusal for a word mark, you typically focus on how the literal presentations of the mark are sufficiently distinct such that it is not likely that the relevant consumers would be confused.
Design marks are more likely than word marks to be updated from time to time. This can be a problem because the United States Trademark Office in almost all cases does not allow registrations to be amended for alterations to marks. In these cases, the only option for trademark owners is to apply to register the new version of the mark.
Marks that combine both word and design elements often stand a better chance of successful registration as compared to words alone. For this reason, adding a design element to a word mark can sometimes be a useful strategy.
If you are contemplating adopting a trademark for your business or have questions about the registrability of your current trademarks, contact the Law Office of Chris Clark. We understand the ins and outs of trademark registration practice and can help steer you through the various issues that may arise.
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