• Russell Kinsey

Trademark Basics 2 - Scope of protection

2. Scope of trademark protection

When filing a Federal trademark application, you will be asked if your mark is comprised of standard characters. By selecting yes, you will be filing a “Word Mark” registration. For a Word Mark registration, you will provide only the standard characters (letters, numbers, symbols, etc.) that comprise your mark. Any pictorial or color elements of your mark will not be included in the registration. This may sound negative but actually can increase the scope of your protection. By registering only the characters in your mark, you claim exclusive use over any pictorial logo using the characters in your registration.

Alternatively, by selecting no, you will be filing a “Design Mark” registration. For a Design Mark registration, you will submit a sample of your mark exactly as you want it to be registered including the appropriate background color if applicable. After your application is submitted, Design Codes will be added to the application to cover the elements of the mark that are not standard characters and to facilitate searches of the database for similar designs. For companies with descriptive names, the Design Mark registration can be a way to show the distinctiveness of the mark and overcome a rejection.

Deciding which scope of protection is best for your trademark is a fact specific question. Consult a trademark attorney for advice on the best scope of protection for your mark.