One of the decisions a trademark applicant must make when filing a trademark application at the United States Patent & Trademark Office ("USPTO") is will your mark be a Standard Character mark (a word mark) or will you choose a Special Format (a mark containing design aspects). If the mark is presented in standard characters, the owner of the mark may choose to use the mark in any font style, size, or colors. In other words, the applicant will not be limited to any particular depiction of the mark. Standard Character marks provide broad trademark protection.
The rights of a standard character mark reside in the literal element, the letters or words. The USPTO has created a standard character set and it lists all letters, numerals, diacritical marks, punctuation marks, etc. that qualify. Therefore, it is important to be aware of the elements contained in this list. If your mark possesses an element not contained in the standard character set, the applicant must register a special format mark. The Standard Character Set can be found on the USPTO website.
If the applicant is filing a Standard Character mark, the USPTO will generate a drawing for the applicant. For basic information pertaining to mark images, see our webpage entitled, What Is A Drawing Page? The drawing may not include extraneous matter such as ™ or ®. Legally, you may use the ™ symbol with a mark in commerce that is not registered, but it should not be included in the drawing. With respect to the ® symbol, you may not use this symbol in conjunction with the trademark in commerce until the Certificate of Registration is issued by the USPTO.
A Standard Character drawing must show the mark in black on a white background. The mark must not include a design element, the letters and words must be depicted in Latin characters, numbers must be depicted in Roman or Arabic numerals, there can be no stylization claimed in the mark, and no underlining is permitted. The following claim must be submitted with every standard character drawing: "the mark consists of standard characters without claim to any particular font style, size, or color".
A special format mark is one that is claiming special characteristics, such as design elements, color, style of lettering or even an unusual form of punctuation. If there is a feature of an applicant's mark that is distinctive or significant to the overall commercial impression, the applicant will want to claim that color or feature as part of the trademark. If this is the case, then a special form drawing is required. If the applicant in not claiming color as a feature of the mark, then the mark should be presented in black and white (and the applicant will have the choice of using any colors).
A special form drawing is required for any mark that contains characters not found in the USPTO's standard character set. Even though the USPTO has waived the requirement of 37 C.F.R. §2.53(c) applicants are encouraged to upload drawings that have a length and width of no less than 250 pixels and no more than 944 pixels. If the examining attorney concludes that the standard character mark should have been submitted in special format, the examiner can allow an amendment if this does not result in a material alteration of the mark. A special form drawing must be in .jpg format and should be scanned at no less than 300 dots per inch and no more than 350 dots per inch.
When comparing special form marks and standard character marks, an examining attorney will take note that the mark in standard characters is entitled to all depictions. Therefore, an applicant with a special form mark will not be able to obviate confusion with a mark that is registered in standard characters because it will be presumed that both marks could be used in the same manner of display. Stronger arguments can be made to avoid confusion if the two marks are both in special form (design marks) because each respective mark is restricted to the exact representation submitted in the drawing page. Therefore, it may be that the examining attorney will allow multiple depictions of the same literal element as long as the overall commercial impressions are distinct. If you have questions regarding a trademark application, please feel free to contact our firm for a courtesy consultation.