Image by Jan Mateboer from Pixabay
Logo Trademark Registration Table of Contents:
- Registering Your Logo as a Federal Trademark: Protect Your Brand
- What Is Trademark Registration?
- What Makes a Good Logo for Trademark Registration?
- The Logo Trademark Registration Process
- Trademark Registration for Your Logo: The Bottom Line
Registering Your Logo as a Federal Trademark: Protect Your Brand
Federal trademark registration is a necessary expense if you plan to be in business for any appreciable amount of time.
You may have concocted your business or product name on your own, or you may have paid a branding or consulting firm thousands of dollars to research the perfect image for your enterprise. You may have hired a graphic designer at significant expense to design your banner, your logo, your letterhead … The entire face you hope to present to the public.
Perhaps you’ve printed that letterhead, hung that signage … What do you do when enter commerce only to discover that your logo looks suspiciously like a similar company’s? Or that the graphic designer from Macedonia you hired through an online service to design the logo didn’t do entirely original work for you?
You’ve wasted a lot of money, in that case.
Registering your logo as a trademark with the US Patent and Trademark Office (USPTO) will:
- Ensure that your enterprise alone has the right to use that design in interstate commerce; and
- Root out in advance of spending all of that capital any issues with the trademark registrability of your design.
When you file an application for Federal trademark registration of your logo or design, you will discover whether or not there are any competing or conflicting designs or logos already registered and whether the USPTO or any third-party mark owners will reject or oppose your trademark registration application.
So long as you do it properly.
First, what is Federal trademark registration, exactly?
Federal Trademark Registration: What Is It?
Federal trademark registration is the registration and recording of your right to use a mark, whether it be a word, collection of words, graphical design, or combination of all of the above, to identify your specific business, product, or service to consumers in interstate commerce.
In other words, a registered trademark guarantees a consumer that, when they buy something being sold across state lines, it is what they think it is and that it is being sold by the company that they think is selling it.
When you buy a can of Coca Cola at your local Quickie Mart, you assume that it has been manufactured by and is sold by the Coca Cola Bottling Company of Atlanta, GA.
Because the familiar cursive “Coca Cola” script on the can has that ® symbol beside it, you are guaranteed of the source and quality of the product.
The purpose of the trademark registration system, unlike that of patent or copyright registration, is to protect consumers and not the creative or scientific output of the mark’s creator.
It does not protect you as author or artist of the work that is your logo design (or business name or slogan, etc.). It protects others.
That said, trademark registration offers your enterprise significant security as well.
When you register your logo as a trademark, you have the presumed right to exclusive use of the mark.
After 5 years of continuous registration, your right to use the mark is contestable only in very specific circumstances.
You have right to register the mark in foreign countries in which you may also conduct business under what is known as the “Madrid Protocol.”
You have the right to request that US Customs block import of infringing, knock-off products.
You have the right to sue for infringement in Federal Courts.
You have the right to use the ® next to your logo as well.
Your ownership will be publicly available online within the USPTO database, warning potential infringers off from the get-go.
What Makes a Good Logo for Federal Trademark Registration?
The first step in registering your logo as a Federal Trademark is to contact a knowledgeable trademark registration attorney.
This step will be discussed below.
Before you do that, however, you have generally composed or had designed a logo that you want to use in business. And you don’t want anyone else to be able to use it.
Is it any good? Is it, from the initial design stage, a logo that can even be registered as a trademark with the USPTO?
How would you know?
A trademark lawyer will tell you when you schedule a consult if there is anything obviously wrong with it.
Short of that, however, what you can keep in mind when composing your logo design is that, as with all trademark registration subject-matter, it simply must be unique enough to specifically identify your business or product.
It also cannot graphically merely represent the product it identifies. (Think a picture of a carrot for—carrots.)
Additionally, there are a number of images or representations that prohibited for registration as a trademark.
Among them, national flats, graphical elements comprising other or parts of other registered trademarks, the likenesses of living persons without their consent, among other things.
It is best, when designing your logo, to simply implement some common sense.
Is it reasonable to think that you can incorporate a picture of Rihanna in the logo on your fruit juice bottle? Do you even know Rihanna?
Is it reasonable to think that you put the Nike “swoosh” on your t-shirt hang-tag?
You get the picture.
The Logo Trademark Registration Process
As noted above, the first step in the process for registering your logo design as a Federal Trademark is to consult with an experienced trademark attorney.
Yes, you can pay a paltry sum of money to an online form-filling service, but, given the expense of starting and running a business, why would you want to cut corners on a legal service that will protect your brand for the life of your enterprise?
An online form-filling service such as LegalZoom will not offer legal advice. It will not assist you with considering the worthiness of your logo from the get-go. It will not consider the scope of your business and your future expansion plans going forward
An online form-filling service cannot assist you with USPTO application refusals or with third-party opposition to the filing of your application.
An online form-filling service cannot represent you before the USPTO.
When your application encounters resistance—and they do—you will need to hire an attorney anyway.
A trademark attorney will, first, after being retained, conduct a professional clearance search for your proposed logo design.
This will involve a professional assay of the USPTO TESS trademark registry, as well as every state’s own trademark registration database, business registrations, web domain registrations, and social media.
A trademark attorney will conduct a much more thorough and on-point search for conflicting logos than you will in a TESS and/or Google “knockout” search.
Once the clearance search is done, your trademark attorney will draft an Opinion Letter advising you as to whether your proposed logo represents a high, medium, or low risk of success in the Federal trademark registration process.
If you elect to proceed with the trademark registration application after reviewing your attorney’s Opinion Letter, the drafting and filing of the trademark registration application is the next step.
Your trademark attorney will draft the registration application properly. You will not be left to flounder through a web-form without guidance, sink or swim, as you would with a cut-rate, non-attorney form-filling service.
Once you approve and electronically sign the application, it will be filed with the USPTO.
And, then, nothing happens for 90 days while a USPTO Attorney-Examiner is assigned to your file.
Once an Examiner reviews your trademark application, he or she will either approve it and send it on to the Publication Phase—or will file a refusal, or rejection, of the application.
This refusal is known as an Office Action.
If you have gotten this far without trademark attorney representation, an Office Action of any sort is the end of the road for your solo movement.
You will have 6 months to reply to an Office Action, or your trademark registration application will be Abandoned—and closed.
You must retain a trademark attorney to review, advise, and, if not futile, draft and file a Response to the Office Action.
An Office Action can be merely “administrative,” asking you do “disclaim” one or more words used in your logo design or slightly adjusting the product or service description, or it can be substantive.
A substantive office action hits the core of the purpose of trademark protection: an allegation that your logo is likely to confuse consumers as to the source of your product or service or that the logo or mark is itself merely descriptive and not unique enough to specifically identify it to consumers.
If the Response filed by your trademark attorney overcomes the Office Action, your application will move on to the Publication phase.
If it does not, your options will be to file a Motion to Reconsider the refusal or to appeal the refusal to what is called the Trademark Trial and Appeals Board (TTAB).
Pursuing either of these options will require a fact- and circumstance-specific conversation with your trademark attorney.
Regardless, presuming the trademark application does move on, the Publication Phase is the next step in the process.
The Publication Phase of the trademark registration process is a 30-day period of time during which your trademark application is reviewable on something called the Official Gazette by third-party mark-owners.
If any of them feel that your logo conflicts with or may tend to dilute the strength of their registered trademark, they will file something called an Opposition to your application.
Once an Opposition has been filed, you are in litigation, make no mistake. Attorney required. You’ll either negotiate a resolution or argue it out in court.
Once the Publication Phase has been surpassed, your trademark registration application will proceed to registration.
If you filed an “intent to use” application because you were not yet using your logo in interstate commerce at the time of your initial application filing, you will need to submit a Statement of Use, providing a “Specimen” evidencing the mark’s use in commerce, in order to obtain registration.
If you filed an “in-use” application and provided a Specimen with your initial application, the USPTO will issue your certificate by mail.
From that point, the trademark must be properly maintained, continually evidencing use in commerce, in order to be retained.
Trademark Registration for Your Logo: The Bottom Line
The bottom line with regard to the Federal trademark registration of your logo is that, if you don’t take advantage of the protection offered by the USPTO registration process, you will be toothless when and if someone else begins to use it.
The sooner you file your application, the sooner you will have public notice of your first use in commerce of that logo available to any potential infringers.
The Hilla Law Firm, PLLC, represents individuals, artists, rock bands, makers, entrepreneurs, start-ups, and large and small enterprises across the U.S. with trademark registration and maintenance legal services.
We provide one-on-one virtual consultations with potential clients, premium customer service, and an open line of communication with your dedicated trademark attorney: John M. Hilla.
Virtual consultations offered and affordable flat fees.
Contact Us at (734) 743-1489 to schedule an initial consultation appointment to discuss your trademark needs.