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Standard Character Format is the Broadest Protection Format for Trademarks For the broadest protection, the standard character format should be used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. "[W]hen registering mark in block letters, registrant remains free to change the display of its mark at any time." In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988). The stylized or design format, on the other hand, is appropriate if you wish to register a mark with a design element or word(s) or letter(s) having a particular stylized appearance that you wish to protect. The two types of mark formats cannot be mixed in one mark but design marks with words in them are treated both as words and as designs for issues of descriptiveness and likelihood of confusion. When "words which are merely descriptive, and hence unregistrable, are presented in a distinctive design, the design may render the mark as a whole registrable, provided that the words are disclaimed, under Section 6." In re Clutter Control, Inc., 231 USPQ 588, 589 (TTAB 1986). See also In re Miller Brewing Co., 226 USPQ 666 (TTAB 1985). A distinctive stylized format may also be advantageous and registrable when the standard
character format of the same word(s) cannot be registered on its own because it is
merely descriptive. Think BANK OF AMERICA. The words are not distinctive by themselves.
In this case the distinctiveness of the mark is obtained from the design rather than the word(s) and a disclaimer such as: NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "BANK" APART FROM THE MARK AS SHOWN is required because the words are not distinctive on their own. A mark such as this can possibly acquire distinctiveness from long time use and lots of advertising. The application for this particular mark used prior registrations for Bank of America to established distinctiveness under Section 2(f) of the Trademark Act. (Bank of America as shown is a registered trademark of BANK OF AMERICA CORPORATION and is shown for illustrative purposes only.) 'Not Distinctive' rejections for word marks are usually labelled with more specific terms like: descriptive, merely descriptive, generic, and others. 'Not Distinctive' is generally used for designs that the trademark examiner believes that are not unique enough for the particular use. |
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Not Distinctive Designs |
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When a background design used for the display of a word or letter mark is sought to be registered by itself, without the word or letter mark, the design may be registered without any evidence of secondary meaning if it is distinctive or unique enough to create a commercial impression as an indication of origin separate and apart from the remainder of the mark; conversely, if it is not distinctive or unique enough to create a separate commercial impression as a trademark, it may be registered only upon proof of secondary meaning. |
In In re National Institute for Automotive Service Excellence, 218 USPQ 744, 745 (TTAB 1983) |
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Three narrow white concentric rings of approximately equal width applied to the outer surface of a dark sidewall tire considered just a refinement of a general ornamental concept rather than a trademark |
In re General Tire & Rubber Co., 404 F.2d 1396, 160 USPQ 415 (C.C.P.A. 1969) |
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Two parallel colored bands at the top of the sock, the upper band red and the lower band blue, for men' s ribbed socks [were not distinctive] |
In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961) |
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Combination of matching color of watch bezel and watch band and contrasting colors of watch case and watch bezel for sports watches found to be nothing more than a mere refinement of a common or basic color scheme for sports watches and, therefore, would not immediately be recognized or perceived as a source indicator |
In re Sunburst Products, Inc., 51 USPQ2d 1843 (TTAB 1999) |
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Floral pattern design of morning glories and leaves for tableware not distinctive and not shown to be other than decorative pattern without trademark significance |
In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987) |
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Lettering of BUNDT mark does not create a commercial impression separate and apart from the term |
In re Northland Aluminum Products, Inc., 777 F.2d 1561, 227 USPQ 961, 964 (Fed. Cir. 1985) |
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Applicant's THRUSERVICE mark with stylized ‘S’ is not inherently distinctive |
United States Lines, Inc. v. American President Lines, Ltd., 219 USPQ 1224 (TTAB 1982) |
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Slightly slanted letters and capitalization of the letters “C” and “A” in COURIAIRE not distinctive |
In re Couriare Express International, Inc., 222 USPQ 365 (TTAB 1984) |
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Stylized mark LITE not inherently distinctive; evidence of acquired distinctiveness persuasive |
In re Miller Brewing Co., 226 USPQ 666 (TTAB 1985) |
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Stylization is completely ordinary and nondistinctive |
In re Anchor Hocking Corp., 223 USPQ 85, 88 (TTAB 1984) |
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Applicant's stylized script “plainly not inherently distinctive” |
In re Geo. A. Hormel & Co., 227 USPQ 813, 814 (TTAB 1985) |
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Board rejected applicant's argument that interlocking letters in its mark “cleverly suggest” applicant's goods |
In re Guilford Mills Inc., 33 USPQ2d 1042, 1044 (TTAB 1994) |
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Filling in some of the letters with shading and presenting the mark as “designers/fabric” are not so distinctive as to create a commercial impression separate and apart from the unregistrable components. Potential consumers are unlikely to see slight changes in the presentation of the mark such as shading, lack of capitalization, and the addition of a slash. |
In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984) |
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The display of the mark with flames [was not distinctive] |
In re Behre Industries, Inc., 203 USPQ 1030, 1032 (TTAB 1979) |
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Not Just Patents ® Legal Services provides a very economical package for USPTO (or
international) Trademark Registration. Call us at (651) 500- PLAN FOR A DISTINCTIVE, SUCCESSFUL, STRONG TRADEMARK To verify a potential trademark is strong, is available to use, and is ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps: 1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions), 2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others) 3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted) 4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimen refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.) 5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs which can slow down a registration. Incorrect IDs may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.) *We don’t stop here but this is a good start! Call us at (651) 500- |
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(Note that the drawing is not in color allowing the registrant to use any colors
in actual use rather than being restricted to red and blue for instance.)
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