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. (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.)


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.



Not Distinctive Designs

Citation

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)

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)

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)

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)

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)

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)

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)

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)

Stylized mark LITE not inherently distinctive; evidence of acquired distinctiveness persuasive

In re Miller Brewing Co., 226 USPQ 666 (TTAB 1985)

Stylization is completely ordinary and nondistinctive

In re Anchor Hocking Corp., 223 USPQ 85, 88 (TTAB 1984)

Applicant's stylized script “plainly not inherently distinctive”

In re Geo. A. Hormel & Co., 227 USPQ 813, 814 (TTAB 1985)

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)

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)

The display of the mark with flames [was not distinctive]

In re Behre Industries, Inc., 203 USPQ 1030, 1032 (TTAB 1979)


Not Just Patents ® Legal Services provides a very economical package for USPTO (or international) Trademark Registration. Call us at (651) 500-7590 to discuss how your trademark can be a strong trademark.


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) 500-7590 for a Strong Trademark. A Strong Trademark is Not Just a tool to increase sales to customers–it is also easier to sell to your investors & licensees.


Not Just Patents® LLC

PO Box 18716, Minneapolis, MN 55418  

1-651-500-7590    

info@notjustpatents.com


Aim Higher®

Facts Matter

Search Not Just Patents® sites:


FederalRegistrationTrademark.com

Tie It Up

Securing the Right IP

Call 1-651-500-7590 or email info@notjustpatents.com or ContactTrademark.com for Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Filing Requirements for Patent Applications

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File   How to Trademark Search

37 CFR § 1.53 Application number, filing date, and completion of application

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Difference between Provisional and Nonprovisional Patent Application

Opposition Pleadings    UDRP Elements    Loss of Trademark Rights

How To Answer A Trademark Cease and Desist Letter

Shop Rights  What is a Small or Micro Entity?

Trademark Refusals    Does not Function as a Mark Refusals

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent Pending see also Patent Marking

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

Patent Drawings

Grounds for Opposition & Cancellation     Cease and Desist Letter


Valid/Invalid Use of Trademarks     Trademark Searching

How to Respond to Office Actions

What is a Compact Patent Prosecution?


Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Patent search-New invention

Color as Trade Dress  3D Marks as Trade Dress

Patent Search-Non-Obvious

Ornamental Refusal  Standard TTAB Protective Order

How to Keep A Trade Secret

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

State & Federal Trade Secret Laws

Merely Descriptive Trademarks   Merely Descriptive Refusals

Chart of Patent vs. Trade Secret

Register a Trademark-Step by Step   Trademark Fixer

ID of Goods and Services see also Headings (list) of International Trademark Classes

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Geographically Descriptive or Deceptive

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Section 2(d) Refusals   ApplyToTrademark.com

Trademark Incontestability  TTAB Manual (TBMP)

Typical Brand Name Refusals  What is a Family of Marks?

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process

Zombie Trademark  

What Does Published for Opposition Mean?

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Acquired Distinctiveness  2(f) or 2(f) in part

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

Extension of Time to Oppose

Trademark Clearance Search   DIY Trademark Strategies


©2008-2014 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: info@notjustpatents.com. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us See us at NotJustPatents.com