Trademark applications fundamentally allow an applicant to apply for one of two types of “Trademarks” (although sound/motion marks are also available); A standard character, or a word trademark and a special format trademark, or what is commonly referred to as a Design trademark.
TRADEMARK FUNDAMENTALS
A trademark is a name, logo, slogan, sound, or motion which when used along with the sale of a good or service, serves as a source identifier and distinguishes the owner of the trademark from its competitors. In the event that the trademark is not yet used in commerce, applicants may apply for a trademark under an Intent-To-Use designation, asserting that while the applicant is not yet using the trademark in commerce, applicant intends to use the trademark in commerce in the future. To move the intent-to-use trademark to a full-fledged trademark, applicant must submit a declaration of a statement of use, along with a “specimen” which demonstrates that the mark is in fact being used in commerce. If the specimen is accepted and the USPTO trademark examiner does not identify any procedural or substantive issue with the application, the trademark will register.
STANDARD CHARACTER TRADEMARKS
Under a standard character trademark designation, trademark law provides protection for the literal letters or words within the mark. Standard character marks allow the mark’s owner to utilize any colors, size or font style he or she prefers. There is no restriction on how the mark can be displayed and consequently, standard character marks allow for widespread protection under trademark law. The USTPO will automatically create an official mark drawing for applicants filing for a standard character mark, which will not feature ™, ®, or other similar trademark features.
There is a standard character group from the USTPO (available on the official USTPO website) which specifies all letters, numerals, marks of punctuation etc. that are covered. Trademark applicants are advised to carefully consider this character group when filing. If an element in the trademark is not provided for by this character group, the applicant will instead be required to use the special format designation.
The USTPO trademark application requires that a standard character drawing be displayed with a black and white background. There must not be any design elements included in the mark. Only Latin characters must be used for all letters and words, and only Roman or Arabic numerals are allowed in regards to numbers in the mark. No stylization is allowed within the mark as well; this includes any underlining. In addition, all standard character drawings must include the following claim in the application: “The mark consists of standard characters without claim to any particular font style, size, or color.”
SPECIAL FORMAT TRADEMARKS
Special format marks, unlike standard character marks, allow for additional characteristics to be claimed in the mark, including color, unique lettering style, elements of design, and also uncommon punctuation. Applicants whose mark utilize unique or noteworthy features, especially from a commercial standpoint, must claim those features (color, lettering, etc.) as a component of the mark itself. Applicants not claiming color as a unique mark feature must present their mark in black and white; this also enables the applicant to have their choice of any colors to be used.
The USTPO’s standard character group is also important for special format mark applications. Applicants whose mark includes characters not found in this group must use a special form drawing. While the USTPO has waived the 37 C.F.R. §2.53(c) requirement, applicants should nevertheless include drawings with a dimension of at least 250 pixels, and a maximum of 944 pixels, in width and length. Examining attorneys evaluating trademark applications may determine that a standard character mark should instead have been filed as a special format mark. In this case, the attorney may permit an alteration, so long as it does not produce a material change in the mark itself. Special form drawings are required in JPEG format; they must be scanned between 300 and 350 dots per inch.
Standard character marks are allowed a full range of depictions. This means that an applicant for a special format mark is not allowed to contest confusion with a standard character mark; this is because both marks may in theory utilize the same manner of depiction. If two competing marks are both special format, more persuasive arguments can be made; this is because, for special format marks, each individual mark is limited to the exact depiction submitted in its application’s drawing form. In such cases, examining attorneys may allow multiple expressions of the same exact element, given that the overall commercial expression of each mark is distinctive.
SHOULD I INCLUDE THE (®), SM SYMBOL, OR TM SYMBOL IN MY TRADEMARK APPLICATION?
No. The three symbols most commonly identified with trademarks are circled R (®), little capital letters TM (™), and the little capital letters SM (℠). Critically, the law explicitly forbids individuals from using the Circled R before receiving trademark registration. In fact, if you use the Circle R after you file the trademark application but before the trademark is registered, the USPTO may deny the trademark application. The ® symbol, cannot be used with a trademark until the USTPO issues the applicant a Certificate of Registration.
A TM, conversely, stands for Trademark and while it can be used next to your mark even before you receive the Trademark Certificate of Registration from the USPTO, you should not include it in your trademark application. Similarly, SM, which stands for Service Mark, may be used before you receive the Trademark Certificate of Registration but you should not include it in your trademark application.
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