Do You Need to Trademark Extensions or Variations of Your Existing Mark?
In the intricate world of trademark law, businesses often grapple with the question of whether they need to trademark extensions or variations of their existing registered mark. The straightforward answer to this inquiry is: no.
Why You Don't Need to Trademark Mark Extensions or Variations
The registration of a trademark grants protection not only to the exact version of the mark but also to any phonetically similar marks or extensions thereof. This means that if you have a registered trademark, you do not need to go through the additional process of trademarking extensions or variations. Opposition can be filed against any mark that infringes on your trademark rights, thus safeguarding your established brand.
Understanding the Registration Types: Word Mark vs Design Mark
Another critical factor to consider is the type of registration your mark has undergone. Trademarks can be registered as either a word mark or a design mark. Each type offers different levels of protection and has distinct implications for modifications and future use.
Word Mark
A word mark, also known as a standard character mark, is used to register words, letters, numbers, or any combination of these elements. The key characteristic of a word mark is that it does not claim any particular font style, size, color, or design element. Instead, it provides protection for the phrase regardless of how it is displayed. This type of registration offers the broadest protection and allows you to make modifications to the visual appearance of your mark without having to apply for a new registration.
Source: David Ferrance's 2015 blog here
Design Mark
A design mark, also known as a stylized logo, is used to register a logo that has a particular stylized appearance, a mark consisting of a design element, or a combination of stylized wording and design. A design mark offers protection for a logo with or without words. Unlike a word mark, a design mark is more restrictive – changes to the design cannot be made without potentially jeopardizing the renewal of the registration.
According to Ferrance, ‘Generally owners of design marks are not free to modify the mark. For example, changing a design mark could make the mark impossible to renew because renewal requires continuous use of the design as it was registered. ’
Source: David Ferrance's 2015 blog here
Choosing the Right Registration Type
When determining which type of registration is best for you, it is crucial to consider the risks and benefits. Ferrance suggests that a word mark offers the broadest protection. It allows you to change the logo without applying for a new mark and provides the most extensive protection against potential infringers.
If you are unsure which type of registration to choose, it is advisable to consult with a trademark attorney who specializes in intellectual property law. This is not a do-it-yourself project, as there are numerous potential and expensive mistakes to be avoided.
For Further Reading
Interested readers can explore the following resources for a deeper understanding of the differences between a word mark and a design mark: Erik Pelton’s blog post from 30 January 2012
To stay up-to-date with the latest developments in trademark law, it is recommended that you follow reputable legal blogs and organizations such as the US Patent and Trademark Office and The American Intellectual Property Law Association (AIPLA).
By understanding the nuances of trademark registration and consulting with legal experts, you can effectively protect your brand and assets.