Applying for a stylized trademark (aka logo, composite, design mark, or special form mark) allows the trademark applicant to claim specific fonts, styles, sizes and colors as actual features of the trademark. Images and graphic elements can also be included. Most people just call these ‘logos’ and they registerable with the USPTO.
The process for trademarking a logo is similar to trademarking a business name (see previous article). It starts with a trademark clearance search, however, the process for searching logos is slightly more complex. The USPTO has a design code system that assigns numeric values to different categories of pictures such as people, animals, plants, stars, and other common items. Each trademark application is coded by the USPTO and takes into consideration the graphic elements of the trademark. These codes are searchable by future applicants, therefore if you wanted to search for all logos containing a bear image it’s easy to do so. Combining multiple design codes at the same time is also possible and allows us to quickly narrow down search results to those that are relevant for the client.
If the search results look good and we don’t see any issues with potential trademark infringement, lack of registerability, etc. then we can go ahead and start drafting the application. Nuances to logo applications start with the color claim. Do we want to claim color or not? The answer to this depends on the client and their trademark. We look at the past and proposed trademark usage because there are benefits and drawbacks to each option. Next, the trademark description needs to be carefully crafted taking into consideration the results of the trademark search. We want this thing to be approved, don’t we? (Yes.) Lastly, which filing basis and classes shall we apply for? These questions are all very important and impact the likelihood that the application will be successful. There’s an art form to these applications so be smart and hire a good attorney.
