INTRODUCTION
Trademarks are protected under the federal law of United States by the registration of it with the United States Patent and Trademark Office. Trademarks are usual and unusual trademarks. For the purpose of registration the trademarks are divided into two, Standard and Stylized format of registrations. A stylized mark cannot be registered under the standard format and vise versa. So the first step for registration is choosing of the right format of registration. The rights given by the formats are also different.
Two types of trademark registrations are there in United States for registration of trademark. They are:[1] [2]
1. Standard Character format of registration.
2. Stylized or design format of registration.
These two trademark options are given by the United States Patent and Trademark office (USPTO) for the registration of trademarks. Both are included in the usual type of trademarks.
Standard Character format of registration
Standard Character is used for the registration of letters, words, numbers or any combination of these elements. Standard Character does not protect any particular Font size, Size or Color. If a mark contains a particular design it does not comes under this format. Thus it can be said that it protects the marks with literal elements. It includes a mark in which all letters, numerals and words are depicted in a particular language which is written in normal format with out unusual marks or punctuations or font in between.[3] Other than the letters and numbers it also includes some symbols such as the ampersand (&), the dollar sign ($), the asterisk (*), etc. It may be a i) word or name ii) A phrase or slogan iii) A way of presenting a word.[4]
For registration the first question is whether the brand or company name which is to be registered is a plain word(s) or phrase or it has a special design or font to be claimed. The absence of claim for design the name or word can be registered under Standard format.
For getting registered under standard format the mark entered must fit within the standard character set. Standard format provides broad rights especially use in any manner of presentation.
Stylized or design format of registration
Stylized or design format of registration is used for the registrations which involves designs or any stylized elements to protect. Thus words, letters and numbers or a combination of these elements having a particular font, color and size which is to be protected can be brought under Stylized Registration. It also includes i)a particular style of lettering, ii) a design or logo, iii) two and three dimensional marks iv) a character v)a distinctive building design etc. It is also known as ‘special form’.[5] In order to register the mark should be in the exact form as it appears in the specimen or on the foreign registration if any.
If the mark to be registered contains a design or anything more than or beyond a word or name then the question whether or not that logo has any value to the company shall be considered. If the logo has no particular immediate value to the company then it have no particular trademark value. The three situations in which the logo has no particular trademark value are:
1. When the logo has nothing beyond the name or a word. The design will not have anything unique to claim.
2. There is no particular association of the logo with the trademark owner.
3. If the logo or design does not incorporate the name within the design a stylized trademark registration will not obtain protection for the name itself.[6]
Even to the extent that a stylized mark registration incorporates the name and protects the name, the strength and value of that protection may be limited
No combined registration is possible i.e. the two formats cannot be mixed in one mark. Both the registration can be obtained for a single mark. But separate forms have to be filed for obtaining both of them.[7]
The broad right is given under the standard registration where the stylized registration gives only limited right. The name or word registered under the Standard trademark can be represented in any font, style etc. but this is limited in case of stylized trademark
In Re Mighty Leaf Tea[8] the court held that ‘The appellant sought registration (of the design) in the standard form which is not limited to any particular rendition of mark’.[9] [10]
The broad rights available under the Standard trademark are confirmed by the Courts in a number of cases. The question of whether a name or word similar to a registered stylized trademark can be registered in a standard form by another Company is answered in negative by the courts. In Advertise.com, Inc v. AOL Advertising, Inc. (9th Cir.) 2000 the patent and trademark office (PTO) requested the AOL Advertising Company to disclaim the standard text version of ADVERTISING.COM to obtain the stylized trademark of its stylized version. The AOL refused to disclaim the standard version on the ground that ‘although it did not claim exclusive rights to the term ‘Advertising’ the Advertising.com is different and protectable.’ The stylized registration is obtained with out disclaiming the standard registration.
CONCLUSION
Standard and stylized format of registration is the two types of registration recognized by the United States Patent and Trademark office. When the former protects the plain written words, phrases, numerals or the combination of these three elements later registration protects the font size, color or any other design of the mark. Separate registration can be obtained for a single mark. But no application with a ‘mixed format’ is allowed by the United States Patent and Trademark Office.
Tinu Anna
Intern
Biz & Legis
[1]Please refer http://www.uspto.gov/trademarks/basics/index.jspfor further details
[2] Please refer http://www.vestadigital.com/173/section.aspx/373/post/how-to-trademark-your-businesss-name for details
[3] Please refer http://www.baystatepatent.com/index.php?option=com_content&view=article&id=26&Itemid=26.
[4] Please refer http://www.bpmlegal.com/tmqa.html.
[5]Please refer http://www.baystatepatent.com/index.php?option=com_content&view=article&id=26&Itemid=26.
[6]Please refer http://mirskylegal.com/2011/01/trademarks-special-form-stylized-design-logo-vs-standard-character-w
[7] Please refer http://ezinearticles.com/?Filing-a-Trademark---Plain-Text-Vs-Stylized-Logo&id=2423888
[8] 2009-1497 (Serial No. 76/678,969)
[9] Please refer Century 21 real estate Corp. v Century Life of Am 970 F.2d 874, 877. (Fed. Cir. 1992) also.
[10] Please refer Cunningham v Laser Golf Corp. 222 F.3d 943, 950. (Fed. Cir. 2000) also.
