Design Trademarks and How They are Treated by Examining Attorneys

As trademark advisors, we often counsel our clients on word marks. We do not spend as much time discussing design marks or composite marks (trademarks that consist of words and design). It is somewhat challenging to discuss this topic because much of the analysis is a visual one. But it is important for our clients to understand some of the general principles involved and some of the differences with regard to a likelihood of confusion analysis.

Design trademarks can possess multiple differences, but still be considered to cause a likelihood of confusion with regard to source. See In re United States Distributors, Inc., 229 U.S.P.Q. 237, 1986 WL 83661 (TTAB 1986), where it was held that a design trademark of a silhouette of a man and woman used in connection with distributorship services in the field of health and beauty aids was likely to cause consumer confusion with a design mark of silhouettes of a man and a woman used for skin cream. Compare the finding in Red Carpet Corp. v. Johnstown American Enterprises Inc., 7 U.S.P.Q.2d 1404, 1988 WL 252364 (TTAB 1988), where no confusion was found between a highly stylized house design used for real estate property management and a mark featuring another highly stylized house for real estate brokerage services. This only underscores the fact that this area of the law is fact specific and although the main criterion for analysis is visual similarity, each determination will be made on a case-by-case basis.

Often the doctrine of legal equivalents is utilized when design trademarks are evaluated for likelihood of confusion. This doctrine is employed when a word mark would evoke the same image as a pictorial depiction. In other words, a consumer would have the same mental image from the cited word mark as it would have for the applicant’s design mark. An example of this doctrine is found in In re Rolf Nilsson Ab, 230 U.S. P.Q. 141, 1986 WL 83581 (TTAB 1986), where it was held that the silhouette of a lion’s head and the letter “L” used to brand shoes was confusingly similar to the word mark “LION” also for shoes. In certain cases where a highly stylized image is found in a design mark, there may be no likelihood of confusion with the equivalent word mark if in the purchaser’s mind, similar images are not evoked.

As mentioned above, these marks consist of words and designs. Applicants need to beware of a general principle that can give Examiners of the United States Patent & Trademark Office (USPTO) a reason to refuse your trademark application. If one element of a trademark is more significant than another element, greater weight can be given to the more significant feature in a likelihood of confusion analysis. In the majority of cases, greater weight is given to the word element. The rationale is that consumers use words to reference and request the goods or services, thus the words are more significant. It is our experience that the Courts are more flexible in determining if the words or design element should be considered dominant. However, the USPTO seems to repeatedly find the words to be the dominant feature.

A U.S. trademark application must be accompanied by a drawing of the mark. This drawing can be in standard characters (where the trademark owner is not limited to any particular depiction of the mark) or in a special format (also referred to as a stylized design format). See our web page entitled, The U.S. Trademark Application, where we discussed various aspects of the application, including the two types of drawings. Special format is appropriate if you would like to register a mark with a design element or a stylized version of lettering. It is important for an applicant to note that you cannot avoid a likelihood of confusion by presenting your mark in a special format if a similar standard character mark is already registered. The logic behind this is that a trademark owner of a standard character mark is entitled to all depictions of the mark regardless of the colors in the mark, the font style, or size of the lettering. Of course, the converse is also true, that if a special form mark is registered, an applicant filing a similar mark in standard characters could be refused based on a likelihood of confusion with the registered design mark.

The attorneys at our firm have been counseling trademark clients for decades. Kindly contact one of our NY trademark lawyers for a courtesy consultation and we will assist you in building a strong brand that can be used as a strategic business tool in the marketplace.