Should you register your trademark in block form or stylized?
Attorney Michael Lasky discusses block form and stylized form in trademark registration.
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Hi, my name is Michael Lasky and if you’re watching this video it’s probably because you’re going to register your trademark and the question has come up is should you register your trademark in block from or in stylized form? Well, first of all, what are we talking about? Let’s take three very famous trademarks, McDonald’s, Nike, Intel, the block form registration if you’re going to go and register your trademark you would do it in plain letters. What that does is it registered all forms that sounds great. You’re going to get any form you use it in, it’s going to be covered at least these words that are internal to that mark are going to be covered.
Now, of course, you know these trademarks as McDonald’s, Nike, and Intel logo and they’re very strong too, so which way should we go? Well, if you go with registering the mark in logo form what happens to your company when you change your logo? Here’s Intel over a period of time, here’s Nike over a similar period of time, and McDonald’s is even more amazing going back here and I even remember that one and that tells you something, and here we are today with the M. So if you registered the block letters, it would cover all these, of course, but you would lose the logos, so then logos are quite important they’re a really big part of a trademark value.
So we said you know, there’s a problem with registering the logo and there’s a problem with registering the block, which way to go? Well in 1951 or whenever McDonald’s started, they could’ve registered this way or this way. Look what happens if they registered this way. The remember is no longer in use so the trademark registration could not be renewed when it came up for renewal because you’ve got to show it’s still in use so they would’ve lost their trademark. So clearly, registering in block letters appears to be a good idea, probably the primary idea.
The reason why you care whether you switch from one trademark to the next is in the world of trademark registrations the gold standard is called incontestability. If you register your trademark and it stays registered for five years, it cannot be canceled by a third party who claims that they were prior. That is really important and if you keep switching from one registration to the other because you had to drop them because the logo had changed you lose incontestability. So a second reason why it’s really important to register the black letter name you can keep it going indefinitely as long as the name’s still in use no matter what logo form you use.
So what’s the right choice? Well, the right choice is if the logo is important, the swoosh is important, that the M is important, the Intel inside with the circle’s important you really should do both but you have to primarily do the word mark but don’t let the logo go away. So ultimately, I have to say you should do them both but in the order, the word mark is typically more important.
So that’s how to handle block form versus stylized. Thank you very much.