Whether or not to register a trademark for a business or product name or for a logo first is probably the most common question prospective clients ask.
Often, for individual entrepreneurs or first-time start-ups, the logo has been created first. The entire business enterprise, in fact, may have sprung from the idea for a cool design that might look great on the front of a t-shirt or at the top of the website.
In other cases, a slogan has led the charge, before a name has even been selected for the business itself.
Perhaps the logo incorporates the business name, utilizing words or what the US Patent & Trademark Office (USPTO) likes to call “the literal element,” and the entrepreneur has not considered the protection of the name as a stand-alone matter.
In that individual’s mind, that logo and the name in the stylized font and color within it, are one and the same.
But should that be the first trademark registered?
Registering a Trademark for a Design Mark First
When you register a logo, otherwise known as a design mark, as a trademark, you are seeking protection of that mark exactly as it appears in the application for registration that you file with the USPTO.
If scribble a logo out on a piece of paper with a child’s magenta crayon and your hand shakes while you do it and you dribble coffee all over the paper—that is what you are registering as your business’ trademark.
If you register a design mark with a literal element—i.e., it has the name of your company or other words in it—whatever font you choose, whatever size you choose (or color) for those words, that literal element is registered and protected only in that particular stylized format.
If you later pull the name or slogan or other verbiage out of the logo and stick them onto your website as a headline banner across the top of the home page, or in a magazine advertisement, guess what?
The name is not registered as a trademark. It is not protected.
It is only protected if you use it to represent your product or service as a component of the logo.
Thus, if you later change or modify your logo, you may also find that your business name is no longer protected at all—in any form.
Registering a Trademark for a Word or Name
Filing a separate “word mark” trademark application for a business or product name on its own is the usual first step to take in the protection of a brand.
A word mark registration, freed from the context of a logo or design, will protect that name in any format in which it appears.
Your trademark registration will protect the name as the banner of a website or in an e-commerce shop, in print advertisements, or on the signage outside of a building, so long as it is used in conjunction with the sale of the product or service for which you applied for registration.
Organizations often file multiple simultaneous trademark registration applications for this reason. One for the word mark, another for a logo, another for a slogan or tag-line, and so on.
On the other hand, if your budget is limited as a start-up, or if you are still finalizing your logo or masthead, it will still be worthwhile to file an initial registration application for the name alone.
There is a tactical advantage in doing so.
If your logo contains your business or product name or other verbiage, that “literal element” will still be reviewed by the USPTO Examiner for the refusal bases of mere descriptiveness or a likelihood of confusion of consumers.
It will, in addition to confusion created by the design itself (i.e., a drawing that is too similar to another mark), in fact be the preeminent element reviewed by the Examiner within that design.
Filing an initial word mark application alone will sound out any potential USPTO office action refusal issues premised on the name or word.
An initial word mark application will, in other words, reveal if any likelihood of confusion issues need to be dealt with before you invest further capital into that particular verbiage.
The downside of waiting, however, is a loss of time. If your logo or design is ready to roll, be aware that the trademark registration process takes approximately 1 year. It will be 90 days, give or take, before you receive any feedback from the USPTO at all on that initial mark.
Logo vs. Name Trademark Registration: The Bottom Line
The bottom line is that the choice is yours with regard to which trademark registration application is filed first.
However, if your logo contains the name of your business or a product name and it is this verbiage that you hope to protect first and foremost, it is advisable to file a separate word mark application first.
You can protect your logo with a separate design mark registration application separately or even simultaneously.
If you are interested in registering a trademark or need legal assistance with an office action refusal for a mark already filed or renewal assistance, click the button below to schedule an initial consultation.
The Hilla Trademark Law Firm is located in Detroit but services trademark clients world-wide.