We’ve previously mentioned that you may protect the goodwill built into your business name or your product names through trademarks. This goodwill encompasses the learned customer expectation related to your business. Federal registration of your trademark can put the entire country on notice of your rights in your trademark. Furthermore, the United States Patent and Trademark Office (USPTO) will not issue a trademark that’s deemed too similar to an existing mark. Therefore, filing first can give you a leg up in the trademark land rush.
Consider a company that has a logo that includes both a word and a design. It’s possible to receive trademark protection on both the word and design. However, the USPTO requires designation of a trademark application as either a word mark or a design mark, among other more exotic options. An application cannot be designated for both design and word mark protection.
How should the company choose the broadest protection?
The common knee-jerk answer is that the word mark is broader, as the background design isn’t required for infringement. However, the true answer isn’t exactly straightforward. Imagine the trademark for Hot Wheels, which include both the words “Hot Wheels” and a stylized swooping flame.
If the word trademark is filed alone, trademark protection may prevent others from filing or using the words “Hot Wheels.” Changing the background design of the stylized logo does not avoid infringement. Therefore, the word trademark alone may not prevent others from using the stylized flame with different words, such as “Smokin’ Ride.”
On the other hand, companies that use the swooping flame may infringe a corresponding design trademark, even with different words. Note that companies may avoid infringement by changing color, if color is claimed in the mark.
Therefore, the broadest protection requires obtaining both a word trademark and a separate design trademark.If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.
Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law