Clients often ask what form of trademark they should register.
Two words mashed together. Or with a space. Or a stylized version. Or a logo.
What’s the best form?
First, a trademark owner in the States doesn’t need to register its mark at all if it doesn’t want to. It automatically gets common law rights in the mark simply by using it in customer sales. When we talk about registering a mark — either with a state or with the U.S. Patent and Trademark Office — we’re talking about building on and expanding those automatic, localized rights that automatically arise through use.
Because of this, the form of use should drive what the owner seeks to expand through registration. That means if the owner uses two words mashed together in its advertising and on product packaging, that’s the form the owner should list in its application for state or federal registration. In other words, the use of the mark should drive the application.
That said, it’s usually to the owner’s advantage to apply to register the word form of the mark without any stylized format. The technical language to describe this form of mark is “standard characters without claim to any particular font, style, size, or color.” Describing one’s trademark this way on the application keeps the owner’s options open. In the future, as tastes change, the owner can change color or font or style, and as long as the new trademark still contains the word element, the new use will support the existing registration. That wouldn’t be the case if the owner applied to register a logo containing words, specifying the colors red and blue. If the owner down the road transitioned to a new logo with the same words in green and black, the owner would need to file a new application for registration to obtain the expanded trademark rights a registration offers.
In summary, the trademark used in a filing should follow the way the mark is used in the marketplace and, all things being equal, it’s usually best to apply to register the word form of the mark rather than a particular stylized form or logo. Doing so captures the maximum amount of intellectual property real estate, giving the trademark owner the most bang for its buck.