On My Mind Blog

Note:  Westlaw republished this article online in Westlaw Today on March 8, 2021 and in the March 24, 2021 issue of its printed magazine Westlaw Journal Intellectual Property. 

Generally, a background design for a word trademark cannot be registered apart from the word mark unless the design is so intricate that it makes its own commercial impression as an inherently distinctive design.

Most background designs are common geometric shapes such as circles, squares, rectangles, triangles or ovals.  Such a design fails to function as an indication of the source of the goods or services unless there is proof that the background design has acquired distinctiveness separate and apart from the word mark—known as acquiring a “secondary meaning.”