In a world of many brands, we’ve all heard about trademarks. Most of us are not as aware of word marks or design marks. From an intellectual protection standpoint, what do you need to protect your brand? Let’s take a look at the definition of trademark, word mark and design mark.

What is a Trademark? 

The United States Patent and Trademark Office (“USPTO”) gives a clear and concise definition of a trademark. 

“A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.”  

This definition includes both “word marks,” which are merely the words themselves, such as “NIKE^®,” and “design marks,” which would be the word NIKE together with the stylized “swoosh” that we all associate with the brand. The types of protection of each mark can be nuanced, so let’s take a closer look at the details of each type of mark.

What Are Word Marks?

Word mark protection is the broadest type of protection for what we commonly think of as brand names. These are the words, phrases, or numbers used to identify your brand, using standard “keyboard” characters.

The word mark of NIKE is a registered trademark (Reg. No. 1,214,930), and it has been since 1982. This word mark is merely the standard character word “NIKE,” regardless of how it is presented. The parent company, NIKE, Inc., may use “NIKE,” “nike,” “Nike,” “Nike!!” or any variation in capitalization or punctuation.  

They may present the word in any color or font, alongside any other design elements that the company sees fit. Word mark registration offers a broad scope of protection. 

What Are Design Marks?

NIKE, Inc., also has registered various design marks, including its flagship mark of “NIKE” in many different stylized presentations. The most common example is the familiar “swoosh” logo:

This design mark registration (Mark Registration No. 1,325,938) is a classic example of a design mark. Design marks may contain letters, numbers, symbols and any other type of artistic element that the Owner wants to use as an identifier of its brand name.  

With the NIKE logo, the “swoosh” is the main design element, but the word “NIKE” is also given some limited protection within this mark. However, it should be noted that this type of protection of the word within the design mark is of a more limited scope than the broad protection granted to the word mark of the same word or characters.  

The protection for the words, numbers or letters contained within a design mark is limited to the words, numbers or letters exactly as they appear in the design mark. For example, if the Owner did not have word mark protection for the word “NIKE” but had only sought to register this design mark, then the Owner’s protection for the word “NIKE” would only extend as far as the presentation of the word contained in the mark as shown above.  

The Owner would not have protection for the word “NIKE” when displayed as “nike” or “Nike,” for example, or if the word “NIKE” was displayed alongside the “swoosh” in another font. 

This narrower protection for words or letters within a design mark can and does have legal consequences and should be carefully considered and discussed with an experienced intellectual property attorney prior to the filing of a trademark application.  

Registering Multiple Design Marks 

To cover all their bases, companies may register multiple design marks for the same brand. Continuing with the NIKE example, the company also has registered the following design marks for use with its footwear, in addition to the two marks already discussed and shown above:

Registration No. 2,104,329

Registration No. 1,284,386

Registration No. 2,117,273

Want Advice on Word Marks, Design Marks or Trademarks? 

There are many options and possibilities for protecting your brand name and all of the images used to identify your brand. To maximize your protection for all aspects of your brand identity, it’s a good idea to work with an experienced intellectual property attorney; Sand, Sebolt and Wernow is an intellectual property law firm you can trust, specializing in patents, trademarks, copyrights, IP litigation licensing, foreign filings and trade secrets. Contact us today.