A prior post examines considerations that should be analyzed when selecting a golf trademark or service mark. That post is directed more toward golf “word marks,” rather than golf “design marks,” or logos. Therefore, this post examines trademark issues unique to golf logos.

Logos play an important part in marketing and brand recognition in the golf industry. Take, for example, Nike’s “Swoosh,” Callaway’s “V,” or King Cobra’s “Snake Wearing a Crown.” These golf logos have become immediately recognizable as identifying the source of particular goods and services. Typically, companies will invest a lot of capital developing a flashy or eye-catching logo in order to build strong brand recognition. However, in building this brand recognition, companies, especially small businesses, may sometimes overlook the importance of protecting their logos through the trademark registration process.

          Many trademark applications are filed using simple word marks in a standard character drawing. The standard character form is appropriate when the applicant wishes to register a mark that consists only of one or more words, letters, numbers, common forms of punctuation, or combinations of any of these elements, without any particular stylization. On the other hand, a trademark application for a logo cannot be filed using a standard character drawing. Instead, a special form drawing must be used. Special form drawings are required if the mark includes a two or three dimensional design, color, or words, letters, or numbers in a stylized form. Despite the fact that different drawing forms are required, a logo may be registered as a trademark just as easily as a word mark.

          Another difference between logos and word marks becomes readily apparent when conducting a trademark search. Word marks may be easily searched by keyword to locate marks that are the same as or similar to the mark being searched. But how does one search for a logo, especially if the logo does not contain words? The answer lies in the design codes.

          The United States Patent & Trademark Office (USPTO) maintains a searchable design mark database. Trademarks that only contain standard characters, type print, block or stylized lettering are not coded because they do not include design elements. However, if a trademark registration or application does contain a design element, then the mark gets coded based upon the particular designs featured in the mark.

          The design search code is a numerical classification index that codifies design elements into categories, divisions, and sections. There are currently twenty-nine categories ranging from celestial bodies, natural phenomena, and geographical maps (category 1) to arms, ammunition, and armor (category 24). Each design element in a specific category is given a six-digit number, with the first two numbers indicating the category, the second group of two-digit numbers representing the division, and the last group of two-digit numbers indicating the section. For example, the Mercedes-Benz “Star” is coded as 01.01.01, which represents celestial bodies, natural phenomena, and geographical maps (category 01); stars, comets (division 01); and stars with three points (section 01).

          Using the design codes, a search can be performed to review all designs with a particular design element, or all designs which incorporate a combination of design elements. For example, if you wanted to review all the designs featuring a cat wearing a top hat, you would enter the design codes for domestic cats (03.01.04) and top hats (09.05.02).

          Although the methods of searching for a word mark are different from that of a logo, the examination process for each type of mark is very much the same. One of the main issues considered by the examining attorney is whether an applicant’s mark would create a likelihood of confusion with any registered or pending marks. The examining attorney searches registered trademarks and pending trademark applications for marks substantially similar to the applicant’s mark as to be likely to cause confusion as to the source of the goods or services. If the examining attorney discovers any such confusingly similar marks, applicant’s mark will be refused registration.

          Similarity between word marks is found by comparing the appearance, sound, and meaning of the applicant’s mark and the cited marks. A finding of similarity as to any one of the above factors may be sufficient to support a refusal based upon a likelihood of confusion. With logos, the question of the similarity of the marks is determined primarily on the basis of their visual similarity. However, if the logo contains words, greater weight is often given to the word portion of the mark. On the other hand, if the words are merely descriptive or generic, the design portion of the mark would be given greater weight. That being said, the mark, whether a word mark, logo, or combination logo-word mark, must be viewed as a whole, and each case turns on its own facts.

          A memorable or flashy logo can go a long way in helping build strong brand recognition. New businesses or existing businesses that use logos to mark their goods or services should take the required steps to protect such valuable assets. Having a trademark search performed can help determine whether the logo is available for use and registration. It is advisable to conduct a search as early as possible to prevent spending thousands of dollars developing and promoting the logo only to find that a confusingly similar logo already exists. If the search results are favorable, the next step towards gaining trademark protection for your logo is filing a trademark application with the USPTO. If your logo ultimately registers, you will receive all the rights and benefits associated with federal trademark registration.

© 2006, Gallagher & Dawsey Co., LPA

December 2006

David J. Dawsey – Enforcing Golf Trademarks