Should You Trademark Your Business' Name or Logo?

If your business has both a brand name and a logo, you are not required to register them with the United States Patent and Trademark Office. However, there are several benefits to doing so.

Businesses with unregistered trademarks may not be in breach of state or federal law, but attorneys agree that there are benefits to successfully filing an application with the United States Patent and Trademark Office (PTO). 

If you have any questions, connect with a dedicated trademark attorney today.

The Earlier the Better for Filing Trademarks

The sooner the trademark application is filed, the better. “I am a big proponent of filing early,” says Ashley Rovner-Watson, associate trademark attorney with Amin Talati Wasserman in Chicago. “That helps when someone else comes along and says, ‘I have this mark, please stop [using it].’ You can then demonstrate, ‘No, I predate you.’ That’s important. You want to be able to predate anybody in your market.”

Michele S. Katz, founder of intellectual property law firm Advitam IP in Chicago, agrees: “When you’re looking at the flowchart, say, of starting a business, the trademark [step] should actually be at the very top,” especially before investing in advertising and a web presence.

Brett Manchel, also an associate trademark attorney with Amin Talati Wasserman, adds: “Think of me as somebody on your marketing team and your business-development team, because we want to be solid on what the mark is going to be [and] what it’s going to cover now and in the future.

“By knowing how you’re going to use the mark, we know what specimens we’re going to need to submit to the PTO to prove that the mark is in use so that we can get a registration.”

Benefits of Trademark Protection on a Business Name

What are the benefits of registration? Enforcement of brand, for one thing, says Katz. Federal registration offers “much bigger, broader protection,” she adds, as compared to common law rights.

It also builds business credibility and shows investment in your brand, Katz continues. “Only federal registration holders can use the ‘R’ in a circle—that is a notice symbol to the public that you have a federally registered trademark.”

Registration also demonstrates savviness, Manchel says, “because a trademark is valuable intellectual property.”

Securing and maintaining trademark registration is important for businesses at all stages of the life cycle, including those preparing to sell. “It’s best to make sure that your portfolio is in a good place, and by that I mean that you’ve renewed all your trademarks,” Katz says.

Before taking steps toward filing, Katz recommends calling a trademark lawyer to discuss short- and long-term business goals. “The business owner and the lawyer can make an educated decision as to their trademark strategy,” she says.

Manchel agrees. “The lawyer can explain everything to you.” An applicant likely won’t be able to glean the same knowledge from online research alone. Legal guidance can help clinch application success, which is good, because, as Manchel notes, “it can get pretty complicated.”

Once you have decided to register a trademark for your business name or logo, when is the best time to do so? The sooner the better, but don’t fret if your business has more pressing priorities. You have to weigh the business’s urgent needs and how much time and resources you have to put toward registration. When in doubt, ask an attorney.

Understanding Different Types of Trademarks

Any word, phrase, symbol, or design that identifies the source of goods or services can be trademarked. There are several categories of trademarks available for registration. Trademark categories are word marks, design marks, and composite marks. There are a few nontraditional categories: sound marks, color marks, and trade dress.

It’s essential to select a strong trademark. The stronger the trademark, the easier it is to obtain registration approval and defend against unauthorized use.

The strongest trademarks are those that are fanciful or arbitrary. Fanciful trademarks are typically invented words, like Pepsi or Exxon. Arbitrary trademarks are actual words but have no association with the goods or services. An example of this would be Apple computers. Apples do not inherently have anything to do with computers.

Suggestive trademarks are the next strongest. These words suggest quality but don’t explicitly state it. Coppertone is a classic example of this. It’s a sunscreen brand with a name that suggests it offers high-quality tanning.

The weakest trademarks are descriptive and generic. A descriptive trademark is a word or phrase that simply describes the product or service. They are only registerable if you establish a distinctive reputation through extensive use in the market. It needs to be a widely recognized association, like ‘American Airlines’ for air travel services.

Generic trademarks are not eligible for federal trademark registration. They are used too often for one person or business to claim. It is the common descriptive word for the product or service.

Protecting Your Business Name (Word Mark)

A word mark protects the business name. It’s essential to protect the company name from any logo design. It can cover all font styles, colors, layouts, and uses. That way, protection applies even if the infringer uses a different logo or stylization.

Having this trademark registered protects brand identity, making it a smart choice for large and small businesses. It prevents third parties from using a similar company name that could potentially confuse consumers.

Protecting Your Logo (Design Mark)

A design mark protects a company’s logo. A trademark can protect a stylized design, symbol, or graphic element. The protection focuses on protecting the visual elements. Sometimes it protects lettering, but only if the font is distinctive. This type of trademark does not protect plain wording. This type of trademark is useful if the company has a recognizable logo as a part of its branding.

Which Offers Broader Protection?

A word trademark arguably offers broader protection than a design mark. A word trademark will protect the wording in all of its forms. In comparison, a design mark will only protect that specific design. Having a word gives the company greater flexibility long-term. The business entity continues to enjoy protection as it grows and rebrands. A design mark will require the business to go through trademark processing again to register the new logo.

Word marks generally create a stronger basis for enforcement. It’s easier to establish a likelihood of confusion. Generally, wording carries more weight in federal court when bringing an infringement case.

Should You Register Both?

Entrepreneurs and startups may find themselves choosing between word and design trademark registration. Filing fees can add up, and filing for only one trademark can save money.

According to Kristen Pursley, an intellectual property attorney at The Dobrusin Law Firm in Pontiac, if you are choosing between registering the two, in most situations, you should trademark your brand name before the logo. “The word mark is going to protect any way in which a third party were to use that word—in the middle of a mark, in a different-looking logo,” she says. “Whereas, with a logo mark, while it does protect the words to a point … when a third party starts using something similar to yours, the analysis is going to include whether or not there’s a likelihood of confusion with the marks as a whole.”

In some situations, it’s best to file for both trademarks. A brand with a highly valued identity will want to protect both its name and logo. This will prevent third parties from using similar trademarks, whether by name or design. Businesses operating nationally or internationally will want to file both to maximize protection given their increased market exposure. It’s also smart to file for both when market competition is fierce and the risk of imitation is high.

When deciding what to trademark, a business needs to conduct a cost-benefit analysis. Consider the filing fees, attorney fees, and ongoing maintenance costs. Compare these to the cost of defending a trademark or paying for a logo redesign.

The Trademark Application Process

When you file a trademark application, you need to pay close attention to the details. “There are some modifications you can make after filing,” Pursley says, “but most often, you are stuck with what you file.” 

Pursley adds, when it comes to trademarks, “If someone comes to us after they’ve attempted to register and have been rejected, nine times out of 10, we have to refile.”

USPTO fees for initial filing depend upon how many classes of goods you’re filing for, but often cost between $250 and $350 per class. Pursley says attorney fees range from $600 to $1,000 or more. If there are minor office actions, most are a low cost to fix, but if you’re running up against a previous mark that’s similar to yours, it can cost thousands to prepare an argument. You’ll need to prove that your trademark and intent to use are sufficiently different from the previously filed mark with a similar name.

How long could it take for a trademark filing to be processed? “I would definitely give it a year,” says Pursley. “It varies greatly based on the different trademark-examining attorneys at the office, and who your application goes to. Some are much faster than others.”

Strategic Advice from a Trademark Attorney

A lawyer can provide legal advice and recommend whether to seek registration for a word or design mark, or both. The PTO website (uspto.gov) is a great resource for more information, but “it’s best to bring in a lawyer,” Katz adds. “I do not recommend filing an application on your own, even though the form can be found online. There are a lot of nuances.”