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Using Design Marks to Avoid Descriptiveness Refusals

When a new business seeks protection for its trademark, generally we start with protection for its name.  The name is usually their most commercially valuable trademark.  Also, there are many reasons to start with the name itself, rather than a logo that incorporates the name.  However, in some cases it may make more sense to apply to register a logo that incorporates the name instead.  That is when the name is descriptive, or otherwise not very distinctive.  In this post, I want to discuss this situation and explain why applying for design marks (a.k.a. logos) makes sense.

The Merely Descriptive Refusal

I have covered merely descriptive trademarks and the Trademark Office’s rejection of these marks in several posts on this blog.  To summarize, your trademark has to meet a certain threshold of distinctiveness in order to be eligible for registration on the Principal Register.  That means that it cannot directly say what your products/services are or describe them.  If your trademark is merely descriptive or generic, then it does not meet that threshold and the Trademark Office will reject your application.  You might try to avoid this rejection by applying to register a design mark instead of your name in standard character format (or just the word(s) by itself/themselves).

Applying for a Descriptive Name with a Design Mark

For names that are generic, descriptive, or otherwise non-distinctive, you might consider applying to register with a unique/distinctive design.  If you have a logo that incorporates your name, for example, you might benefit from applying to register that versus just the name itself.  This allows you to just disclaim those words, and you can still potentially register the logo on the Principal Register.

You should be aware that when you disclaim a word or words in your mark, you are giving up exclusive rights to those words.  In most cases, these are words you wouldn’t be able to gain exclusive rights to anyway.  However, this is an important decision, and you should consult with a trademark attorney before agreeing to a disclaimer.  The Examining Attorney could be wrong, and if so you may unnecessarily be giving up important trademark rights in your name.

While you might have to disclaim rights to the words in your name, those words are still protected as they are used in your design mark.  This might seem like a contradiction… and you would be right.  The disclaimer means you do not claim rights to the specific words by themselves, but only as they are used in the context of your logo.  In fact, the disclaimed words in a design mark can actually be used as a basis for the Trademark Office to reject applications for other trademark using those words.

If your trademark is descriptive (not generic), you might choose between taking this approach and registration of your mark on the Supplemental Register.  The Principal Register offers broader protections, so generally I believe registering a design mark and getting those protections is a better option.

Stylized Words

When I use the word “design,” I am referring to a picture, image, or artistic design.  Many business logos are just the name of the business in a particular font, though.  This kind of logo is not something that you would want to apply to register for the strategy outlined above.  That is because a word, even in a particular font, is essentially still just that word (at least to the Trademark Office).  It doesn’t create an impression to consumers that is separate or different from just the word itself.  As a result, if you apply to register a descriptive word in a fancy font, it will still be rejected as merely descriptive.

Considering Registration of a Design Mark?

Whether you are thinking of applying to register a design trademark for strategic reasons or just to protect the design itself, you need to make sure you’re doing things the right way.  If you would like to work with an experienced trademark professional, please feel free to call me at (314) 479-3668, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today.  I look forward to speaking with you.

Contact Kevin

P.O. Box 94208
Phoenix, AZ 85070

(314) 479-3668

kevin@yourtrademarkattorney.com

© 2019 Kevin Haynie
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