Standard Character Marks vs Design Marks. What is best for you?

By Trish Sawhney

Photo by Austin Chan on Unsplash

When submitting a trademark application, clients often ask whether they should file an application for a standard character mark, a design mark, or both.   

A standard character mark, also known as a word mark, refers to a word, phrase, acronym, numbers or letters, regardless of the font, size, style, colour, etc. It is often deemed to be the broadest form of protection since it covers the words themselves. By contrast, design marks may consist of pure design elements and/or word elements. However, the word elements are protected in the context of the design, therefore if the design changes, protection for the words incorporated in the design may be lost. 

When deciding whether to register the word(s), the design, or both, some important factors to consider are:

• What is your budget? Ideally, separate word mark and design mark applications is best as it offers a wider scope of protection; however, filing multiple applications is more costly. If you cannot justify the expense, combining the word and design elements in a single registration or simply filing one or the other can be cost-effective. Alternatively, focusing on the word element(s) alone will offer you the broadest scope of protection.

 

• How strong is your word mark by itself? Some word marks are deemed unregistrable as they can be confusing with another registered mark, descriptive of the goods or services with which they are associated, or considered lacking in  inherent distinctiveness. By adding distinctive design elements this may help to overcome these types of objections. 

 

• Do you see your design mark changing in the foreseeable future? Design marks only protect the exact design filed, so if you anticipate changing your logo or design over time, keep in mind that you will need to file a fresh application.

 

• How memorable is your design mark? Design marks can be very effective as they are memorable for the average consumer. If your design is very unique and you want to ensure others don't copy it, trademark protection can be a very good tool as unlike copyright registration which eventually expires, trademarks may be renewed in perpetuity.  

Have more questions about choosing the right type of mark for you? Don't be shy - contact us for a free consultation!