Almost all businesses have several trade-marks that deserve the protection provided by a trade-mark registration. However, a new business often has little income and many expenses so filing multiple trade-mark applications at the outset can be prohibitively expensive. In this issue, we will discuss how to set priorities for the filing of multiple trade-mark applications by a new business.
Word Marks vs. Design Marks
The primary trade-mark for many businesses is a word or combination of words. They may be: (a) a known word or a component of a known word; (b) an invented term; or (c) a combination of the foregoing. When represented in the standard characters of the Roman alphabet, these are all known as “word marks”.
Most businesses will also adopt a logo with graphic elements such as fanciful fonts, colours, lines and stylized images. These are known as “design marks”. If the design mark combines graphic elements with a word or combination of words, it may also be referred to as a “composite mark”.
When registered as a trade-mark, a word mark effectively prevents others from adopting a similar word mark even if they represent it in a different font or in combination with different design features. This is true if the word marks are similar in appearance, sound or meaning. For instance, GOOGLE and GUGAL may be considered confusing since they sound similar and HURRICANE and TSUNAMI may be considered confusing since they have a similar meaning. For this reason, it is often stated that word mark registrations provide the broadest trade-mark protection and are most often ranked as the most important trade-marks to register. The word marks which also appear in the business or corporate name are often given the highest priority.
When registered as a trade-mark, a design mark effectively prevents others from adopting a similar design mark, but the scope of protection is more limited in effect than that of a word mark registration. Although design marks are also prohibited if similar to others in appearance, sound or meaning, design marks are rarely capable of being sounded or assigned a specific meaning. As a result, the protection of design marks is effectively limited to their appearance and minor variations can have significant legal consequences.
First, variations in the dominant features of a design mark, such as the word elements, may allow a competitor to adopt a mark remarkably similar in appearance if not confusing. Second, a trade-mark must be used in the format in which it is registered in order for the registration to remain valid. Unfortunately, newly adopted design marks are especially vulnerable to “tinkering” as they are adapted by the business to new promotional purposes. Finally, the design features of a design mark are often automatically protected by copyright protection as artistic works under international law. As a result, exclusive rights in a design mark can often be protected under copyright law.
Given the foregoing, design marks are often ranked as less important trade-marks to register. Of course, this generalization may be set aside if the design mark is considered unusual or has been used consistently for several years.
In some cases, the word marks adopted by a business are relatively weak or wholly unregistrable as trade-marks. This will arise when the word mark: (a) is an acronym; (b) is a name or surname; or (c) is comprised of geographic place names, laudatory terms or other descriptive elements. When these circumstances arise, a trade-mark registration may not be available at all or may enjoy only a narrow scope of protection so filing an application to register the word mark may be an unwarranted expense.
In such circumstances, an application to register a composite mark, including both word and design elements, may be filed instead. Of course, a registration for such a composite mark will only be entitled to a wide scope of protection and merit the cost of filing if its design elements are truly distinctive. Further, unregistrable words such surnames and descriptive terms will not be rendered registrable as a trade-mark simply by using a fanciful font or adding a few simple lines.
In order to set priorities for the filing of trade-mark applications, it is important to understand their value from a business perspective and the relative benefits and weaknesses of a trade-mark registration from a legal perspective.
Disclaimer: The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.