by Traverse Legal, reviewed by Enrico Schaefer - November 15, 2011 - What is a Trademark or Service Mark?
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
This is Brian Hall, a trademark attorney with Traverse Legal, PLC; a trademark law firm representing trademark applicants and registrants throughout the United States. Today, I will be answering the question: What kind of trademark do I need? And in order to answer this question, we need to talk about the different kinds of trademarks that exist. Let’s first keep in mind that a trademark is a distinctive sign, symbol, indicator or some other representation that is used to identify the source of goods or services provided. A trademark is typically a name, word, phrase, logo, symbol, design, image or even a combination of all of those elements or some of them. There’s even what’s known as non-conventional trademarks, which can be made up of colors, smells and even sounds. So, when determining whether or not to apply for a trademark, and more specifically, what kind of trademark to apply for, there are many options out there.
In a USPTO trademark application, one can select either a character mark, a design mark, a logo mark, or a combination of more than one. When clients ask me which one of those should I pursue? I always say, all of them.
However, the reality is that not many companies have the budget to simply protect every kind of trademark that they have. In those situations, I always advise my clients in the same way. I say it’s critically important to prioritize which marks provide you the most value and have the most value to your business. Once you do that, it’s easy to determine which marks you need to apply for.
In determining what kind of trademark to get, I always recommend starting with a character mark. And a character mark is simply the word or words that make up your particular trademark. It differs from, for example, a design mark, which might be words in some scripted text format or some other design element. It also differs from a logo mark, which could simply be some sort of graphical representation without any words.
In an ideal world, companies like Nike protect all kinds of different marks. They protect the character mark Nike, the word itself. They protect the design of that mark, such as the Nike characters with a particular font, size, and color, whatever it might be. And they protect their logo, the swoosh mark.
However, when it comes to deciding which one to protect initially, protecting the character mark itself should provide the broadest protection, because even if somebody is referring to your mark in words, let’s say on television or on a radio, everyone knows what that mark is, and it will provide the broadest protection against trademark infringement of it.
Alternatively, if you simply protected a logo, for example, if someone is speaking about your brand, and the logo isn’t part of it, and they don’t say the logo, per se, then that wouldn’t be entitled to protection, necessarily.
So, in order to get the biggest bang for your buck, it is critically important to protect your character mark. If successful in protecting your character mark, it is always worthwhile considering other types and other kinds of trademarks that you may protect like your character mark. These could be a logo that gets used with the character or used by itself. It could be a particular design of the character mark, such as a color or a particular script, whatever it might be. But a rule of thumb is, the more trademark registrations you have, the more likely you have broad protection and an ability to stop someone else from infringing your trademark.
I hope this has been helpful. Once again, this is Brian Hall answering your question: What kind of trademark do I need?
You’ve been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
