January 29, 2020
There’s a common—and understandable—misconception about trademark registration. Namely, that you can protect distinct components of your brand through one trademark application. Unfortunately this is not the case. To protect separate components of your brand—e.g., name, logo, slogan—a separate application must be filed for registration of each component.
Related: Do I Need to Register My Trademark?
In an ideal world, you would obtain trademark registration of both the name and logo of your business. You might also try to register product names, slogans, or other source identifiers of your company’s goods or services. Of course, ours is not always an ideal world and economic realities—especially for boot-strapped startups—often limit the ability of a company to go for the full suite of legal protections available. Trademark registration is often a prime target for cost-cutting.
Related: How To Register A Trademark [Step-by-Step]
As a result, it’s not uncommon to be asked whether, if forced to choose, a company is better off trying to register its name or its logo. Let’s take a look at the benefits (and limitations) on each form of trademark registration.
When a business seeks to register its name as a trademark, it’s applying for registration of a “standard character” or “word” mark. This type of application seeks protection of the use of the particular name in any form, regardless of the font, color, size, or any other feature of the name.
For example, the name AMAZON is a registered word mark of the Seattle company Amazon.com.
When a business seeks to register its logo as a trademark, it’s instead applying for registration of a “design” mark. This type of application may seek protection of a stylized image, words, or both together.
For example, the Amazon logo is a registered design mark. But the logo paired with the stylized word “amazon” is also a separate registered design mark.
Ideally, you’ll be in a position to seek registration of each component part of your core branding. But if you feel you must choose, conventional wisdom, which I agree with, dictates that you should register your name as a word mark first.
Why is this? Well, when your name is registered as a word mark, you have the right to use it in any size, font, or color, allowing you freedom to explore different variations of your branding without having to apply for trademark protection if you feel like changing fonts, for example.
Design marks, on the other hand, do not typically give the owner much freedom to alter the mark. In most cases, you’ll be stuck with the image, font, and overall style you registered with your design mark, leaving you with less flexibility to re-brand.
So, for most companies, they’ll be better off starting with an application to register their name as a word mark. Of course there are exceptions to this. For example, the company name might not be eligible for trademark registration. Or perhaps the logo is such an important piece of the branding that it takes priority.
If you’re not sure which element of your brand to prioritize, please get in touch with Mark.
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