Generally, what’s good for the goose is good for gander. Except in certain circumstances when you are dealing with the Trademark Office. Relying on trade dress to distinguish your mark from a prior registered word mark is one of those situations where the rules apply differently if you are the Applicant instead of the Trademark Office.
When filing a trademark application you have the option to submit a stylized drawing of your mark or to claim your mark in a standard character form. When you choose to protect your mark in a standard character form, the trademark rights that result from that application exist in the word or words regardless of stylization. Filing in a standard character form does two things for a trademark owner. First, it provides flexibility for the modernization of a mark. Second, it prevents another party from avoiding the trademark owner’s rights by adopting a sufficiently different stylization for his or her mark.
The general rule is that when analyzing a word mark, the Trademark Office will not look to the trade dress associated with the word or words. The decision must be made on the marks as they appear in the application or registration. However, if you filed an application claiming your mark in a standard character form, the Trademark Office can look at your trade dress to determine if the manner in which you are using your mark creates a similar overall commercial impression with the mark displayed in the registration.
You would link that if the Trademark Office can rely on the real world trade dress to support its case, that the trademark owner should be able to do the same. Unfortunately, it is not the case. Trade dress may not be used to prove the absence of a likelihood of confusion.
For trademark searchers, we need to be aware of this disparity when evaluating the search results. We need to be cautious about clearing trademarks when the record reveals a mark with a logo or stylization similar to the planned designed for our mark. We also need to be cautious about recommending certain stylization or logos as a means to differentiate our mark from a prior mark registered in standard character form.