I am in the process of filing a trademark (both word and design separately) and had a question about the design mark. If there is a word contained in the design itself, should I use a specific font? Does the font I choose matter and will I run into issues with the "creators/designers" of the fonts themselves from an IP standpoint?
2 Answers from Attorneys
You can use whatever font you want. Fonts in themselves are not protectable apart from computer programs, so I don't see how that can be an IP issue, but if you have concerns you should get some specific advice on it.
The words in the design mark are your literal elements. They and any text mark you file needs to be properly cleared. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the NH secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.).
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
If you would like to discuss further over a free phone consult, feel free to contact me anytime that is convenient.
Our firm is now referred by the American Bar Association (see under the New York section):
You need not worry about IP rights in the fonts themselves, as they have been held in court decisions to be unprotectable by copyright. However, the font does matter to the extent that it is part of the overall appearance of the mark -- think of the Ford logo with white script letters in the blue oval. Your first concern is to decide upon a particular depiction for your composite mark; as observed by another answer, you should search for marks that might be confusingly similar in words or appearance with other marks in use.