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Anatomy of a trademark registration

Posted by ipelton on: October 13th, 2010

On behalf of the City of Falls Church Economic Development Authority, we recently obtained three trademark registrations for their marketing and promotional slogan, “The Little City” (developed by the wonderful talent at SmithGifford).  Why three different registrations?  And what do the different parts of the registrations mean?  Let’s examine them:

Protecting the wording THE LITTLE CITY in all capital letters (called a “standard character mark”) protects the wording/lettering itself in all variations. In other words, the protection has no design, color, font or size associated with it meaning that any design, color, font, or size using could be using or infringing the registered trademark.

The logo in black and white protects protects the design which includes the words, and protects makes no claim as to color so it could be presented in, or protected for, any color combination or black and white.

The logo in color protects the design including the text and the colors detailed in it.  Generally, a black and white design is sufficient and provides the registrant with maximum flexibility in case it uses multiple colors or could change color usage in the future. The colors should be protected, however, when the colors are significant. Here, the colors are significant because of (a) the very distinctive and creative use of multiple colors, and (b) because they are aligned with a color palette and theme used the City in other logos, including that of the school district.

Below is a scanned copy of the registration certificate for the color logo. it has many features packed on to one page:

  • The top middle features the protected design.
  • The registration number is listed below it, along with the registration date and with name and address of the registrant or owner.
  • Below that, the services (or goods) that the trademark are listed and registered for are detailed.  Having and comprehensive but accurate description of services is key to have strong and valid trademark protection.
  • On the left hand side the registration notes that it is on the “Principal Register.” Some weaker trademarks can only be registered on the Supplemental Register which provides some, but not all, of the benefits of registration on the Principal register.
  • A disclaimer of the word “CITY” is included since the word is descriptive of the registrant’s services.  A disclaim of wording means that the trademark registrant does not claim exclusive rights to the ‘disclaimed’ term(s). Generally that is because the words are commonly used in the relevant industry.
  • A description of the colors claimed and of the design layout is provided. Usually these are provided by the Applicant/Registrant.  The description is necessary for logo filings because the only way to search designs by others for possible conflicts is based on the descriptions or based on a coding system provided.  More about ‘design code’ searches here.
  • Other administrative details such as the application’s serial number and the USPTO attorney who reviewed the file are provided.
  • Finally, a nice seal from the government and the Director’s signature are provided.

Lesson: Overall, the USPTO registration contains a myriad of information that is important regarding the scope of the rights granted by it – such as the mark itself, the owner, the description of the goods or services. Just one reason why the application process should not be taken lightly – there are many opportunities to make errors that could prevent registration or allow registration but affect the rights granted by it.

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