Not everyone knows that it is possible to register as a trademark even a simple word, completely devoid of any graphical characterization: it is the so-called denominative or word trademark, while figurative trademark consists of characterizing graphical elements.
The question often asked me is:
Is it better to register a word mark or a figurative mark?
The answer is: it is necessary to evaluate case by case.
When registering a figurative trademark
Generally speaking, if the word that you have chosen for becoming your trademark has a strong conceptual link with the product (or service) which will be distinguished by it (for example: good ice cream for ice creams), the choice of a verbal mark does not appear the most advisable, as the brand could be considered descriptive and not registrable or, even when registered, it could be contested because not distinctive.
Be careful, however: a descriptive word, even if graphically stylized, will also run the risk of receiving complaints based on the lack of distinctive character because the graphic stylization may not be enough to give it the strength which is necessary to become a brand with distinctive capacity.
The speech could change by adding to the word one or more original graphical elements, devoid od conceptual connection with the identified product (for example, the image of a cow is not distinctive if used as a brand of a milk pack, but it could be distinctive, for example, when used as a trademark of a jewel).
When registering a denominative trademark
On the other hand, if the word is distinctive, it may be convenient to register a word mark which will give you more freedom in using it, allowing you to reproduce the logo with any graphical shape and to change it over time. Provided that the word constituting the trademark is sufficiently distinctive, the possibility of recording both the word mark and the figurative mark can be assessed, because on one hand there could be the need to have greater freedom in the use of the word and on the other hand, however, you could wish to protect a specific graphical characterization through the force of the registration.
Which elements must be considered in the choice between denominative and figurative trademark
- Graphical characterization is binding, namely if you register a graphical stylized name then you will have to use such name with that graphic;
- If you choose to register a trademark claiming some colors, you have to know that in some types of registrations (for example, international trademark) you will pay ad additional sum because the mark claims colors;
- If you choose to register a trademark composed both of words and graphical elements, it will be advisable to carry out a search on the whole brand.
The elements seen are only some of the many which must be taken into consideration before registering a brand and for this reason it is always advisable to ask for the opinion of an expert in IP field. Contact Eva Troiani law firm will provide you with any clarification on this!