In establishing a new business, owners often seek legal advice in connection with branding their business by developing and securing their company’s intellectual property. Part of this inquiry typically involves the question, “Should we seek trademark registration of the named business brand or the company’s design logos, or both?”The short answer is “both”. However, registering multiple trademarks with the U.S. Patent and Trademark Office is sometimes not feasible for new business owners working within the confines of a tight budget. So which trademark registration should take priority?
Differences Between Design Marks and Word Marks
Most businesses will not only have a company name brand, but also a design logo identifying the company. In the trademark world, we refer to the company name brand as a standard character mark or “word mark,” and the design logo as a “design mark”. These two trademarks are unique in their analysis and examination at the U.S. Patent and Trademark Office and they require two separate filings. When you apply to register your company name “word mark,” you are protecting the name itself,separate from any font, coloring, or other styling. In other words, you are seeking protection from third parties using your company name or a similar one, with like or similar goods or services.
On the other hand, when you apply to register your logo or “design mark,”you are seeking protection over the very specific shape, orientation, stylization, and/or color in the mark. Your company name may or may not be a part of the logo, but you are seeking protection from third parties using the specific design of your logo, or something similar, without regard to the company name.
Which Type of Mark Should Take Priority?
Since each type of trademark registration provides different protection and rights, it is not surprising that thebroadest level oflegal protection is achieved by registering both a “word mark” and a “design mark”. However, where cost is an issue, you must determine which is the most important. First, look at your company name and ask how unique is it? Is it unique enough to guarantee that it will qualify for trademark registration, or does it contain generic or descriptive terms? If it is unique enough,you should typically apply for registration ofthe company name, the business “word mark,” rather than a logo, a “design mark.”The reason for this result is that the applicable laws offer broader protection for word marks than design marks.
As suggested above, when you register a logo, you are getting protection only over that exact representation of your business brand, and that protection does not typically extend to the actual name of your company, even if the name is included in the logo. In contrast, when you register your company name as a word mark, you can effectively prevent other businesses from using your company name, or anything confusingly similar. Your company name is protected regardless of what kind of styling is added to it or how it is presented to consumers—the words themselves are protected—which is often how customers identify a company.
Except for larger companies, a logo generally has less brand recognition for a business than the actual name. Therefore, if you were to register only your company’s logo, you wouldreceive the protective benefit of registration only if someone used the same logo, or something similar. However, if it is determined that your business name contains words that render the mark generic or descriptive such that trademark protection at the U.S. Patent and Trademark Office is not possible, it is generally recommended to register your logo so that you still gain some protection over your trademark, even though that protection is somewhat limited.
There are many exceptions to these general principles, so it is critical to have your company’s intellectual property reviewed by a trained professional who knows the applicable laws. The trusted and experienced trademark attorneys at Gehres Law Library work to secure the broadest protection for our clients’ intellectual property.We are committed to providing the highest quality service available at affordable rates. Contact us today for a free evaluation of your company’s intellectual property.