Font isn’t something people always think about when it comes to trademark. For many businesses, the words of their trademark are the words, and the form of the text is chosen because it “looks nice,” matches a vibe, or pairs well with the products or services. In actuality, stylized words are a form of logo mark in trademark, and they can be a big deal. Think of a particular stylized white cursive script against a red background, and a very specific and classic popular beverage brand will come to mind. A recent trademark dust‑up between Taylor Swift’s company, TAS Rights Management LLC (“TAS”), and Cathay Home, Inc. (“Cathay”), a bedding company, is another reminder that trademarks for stylized text can matter a whole lot.
Cathay has already registered a SWIFT HOME trademark, and it applied for registration for another trademark. The most recent application featured “Swift” in a looping cursive script. TAS filed an opposition against Cathay’s application, which is what a trademark owner can file to try and convince the USPTO to reject a trademark application before it reaches registration. In the opposition, TAS argued that the font in Cathay’s mark looked a lot like Taylor Swift’s signature, as well as several trademarks TAS owns. Given the “Swift” in each mark and the similarity of the stylized script, TAS argued that using the mark with the bedding might draw consumers to believe that Cathay’s products were somehow connected with or endorsed by Taylor Swift, which they are not.
It’s worth taking a moment to capture the nature of the issue. The issue wasn’t the word “Swift” itself (a separate issue). The BBC reported that TAS and Cathay previously entered into a consent agreement (agreement where the parties agree to allow their trademarks to coexist and not fight about it) to allow both parties to keep using their marks in harmony, and this dispute apparently would not have an impact on the marks subject to that agreement. Instead, the issue truly boiled down to the combination of the words and the font in the TAS and Cathay trademarks.
Earlier this month, Cathay announced that it was going to abandon its trademark application. Cathay had applied for this registration as intent-to-use. More on that here, but essentially, you can apply to register a trademark before you start using it in order to “hold your spot in line.” Since the trademark wasn’t in use yet, and Cathay was facing such significant headwinds to registration, it decided it was easier to abandon the application now rather than after a protracted legal battle with TAS.
With today’s post, here are some takeaways to draw:
- A word mark has a lot of value (more on the tension between logo marks and word marks here), but so too do marks with stylized text.
- When deciding on fonts to stylized word marks, it is worth thinking about whether the stylized text looks like other familiar brands out there. It can be better from a trademark perspective to strike out with your own style than to try and ride the coat tails of another.
- When in doubt, ask your attorney, and ask early. By asking early, maybe you can avoid a scary legal fight with a world-famous pop star.
Thanks for reading!