Maiorana, P.C.

Registered Trademark Attorneys

How many Trademark Registrations do I need?

Clients sometimes ask about registering many variations on a mark they would like to use.

Keep in mind that Trademarks are about use of a mark in association with a product or service. If you are not going to use your mark with your goods or services, then there is no point in filing a trademark. Eventually the USPTO will ask to provide a specimen. I have had clients that I have asked to provide a specimen and they respond with, “Oh, we’ve never actually put that on our product, but we still want the trademark”. This will not work because the applicant is not using the mark in association with a product.

When deciding which marks to file, and how to file the mark, it is important to consider how you plan on using the mark. This can be difficult because designs can evolve and marketing strategies can change.

Usually, the best approach is to file your mark as a ‘standard character’ mark. This is sometimes referred to as a word mark. A standard character mark will provide broad protection of the word(s) of your mark. The design, color, size or font of your mark do not matter. You can change the style or design of your mark and you will still have protection. So you will have some flexibility if your designs change.

For the words of your mark, variations in spelling, using uppercase letters, or adding hyphenations do not offer much benefit. For example, the different variations of the word ‘Mark’, ‘mark’ and ‘m4rk’ would likely fall under the same protection of a word mark.

Another option is a design mark. These are sometimes referred to as a special form or logo mark. You can file your logo as a trademark if you have a distinctive design. You can specify colors, or apply without a claim to color.

With design marks you must use the exact design that you file. If you claim colors, you have to use the colors you claimed. If you do not use the exact design, then you risk losing your registration. If you decide to re-design your logo in the future, then you will need to file for an additional trademark with the new design.

You can also include words in your design mark. This can be even more restrictive because then you would have to use the same arrangement of the words and logo. The font of the words cannot be changed. If you file with the words above the logo, then you would not have protection for the words being below the logo. You need to consider the exact arrangement you plan to use.

On the other hand, a word mark registration would provide protection for the different variations. One situation that a design mark might be preferred over a word mark is when there is already a trademark filed that uses similar words. A distinct design might overcome the previously filed mark and allow you to register your mark.

A familiar example is Nike. Nike has a mark for the word Nike above the swoosh.

However, this mark only protects the exact arrangement of the mark. Nike very often uses the swoosh alone, which would not be protected with the above mark.

Nike has long held a word mark on the name Nike.

Nike also has their world-famous swoosh with no words.

The word mark Nike would not offer any protection for the swoosh without the word Nike also. The design mark for the swoosh would not offer any protection for the word Nike without the swoosh.

Because Nike has a big budget, they can afford to file many marks on different combinations and re-designs. With a big budget, Nike can ensure all circumstances are protected. However, many small businesses do not have the budget of Nike.

For these reasons, if the words of your mark are unique, then I recommend starting with a word mark. If you have the budget to apply for more marks, then we can file additional marks. This can also be done at a later date, so you can apply for more protection as your business grows.

Call to set up an appointment to talk to one of our trademark attorneys. MI - 586-498-0670 or CA - 408-890-6549.

  • Chris Maiorana
  • April 2019
[1]  We sometime call a trademark simply a "mark".
Topics: trademark application, trademark lawyer, logo

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