Why should I trademark my business name or logo?

To recap, what is a trademark? A trademark can be any word, phrase, symbol, design, or a combination of these things (typically referred to as a “mark”) that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors. When trying to build a brand for your business, you may consider getting a trademark for your business name or logo. The question becomes, should you trademark your business name, your logo, or both?

The Benefits of Registering Your Business with a Trademark

In most cases it is recommended to trademark both the name and the logo of a company since they protect different aspects of the brand. Here are just some of the benefits of getting a trademark:

• Your trademark will be listed in the United States Patent and Trademark Office (USPTO) database of registered and pending trademarks. This listing services as an official notice to the public and those searching for similar trademarks. 

• A registered trademark guarantees you the exclusive rights of the trademark and ensures that the trademark is not already being used by another business entity. 

• Your certificate of federal registration eliminates the need for overwhelming evidence in the case of a lawsuit.

• The U.S. trademark registration can be used to file for trademark protection in foreign countries.

• You will be able to use federal trademark registration symbol, ®, along with the trademark, which will act as a deterrent to others who may want to use a trademark that is similar to yours.

• Your business trademark has legal liability protection against another business entity claiming that you are infringing on a previously registered trademark.

How Do I Determine Whether I Need to Trademark the Business Name or Logo

A business name protects the literal part of the brand such as the words, letters, numbers used in the name itself. On the other hand, the logo protects the graphic representation of that name such as the artwork, font, style, color, visual representation of the logo. In general, a business name is the most recognizable aspect of a business. Consequently, the priority should be on protecting the name of the business. However, if the registration of the name is problematic, companies may opt for getting the logo trademarked to make their brand distinctive from others.

Types of Marks

Standard Character Marks – The rights of this type of mark reside in the literal element, the letters, or words. Therefore, it does not apply to the design of the name but the name itself. The USPTO created a standard character set and it lists all letters, numerals, diacritical marks, punctuation marks, etc. that qualify. If granted, the standard character mark offers the broadest rights and protection. Therefore, a standard character mark for your business name means no one can use that same name for the same goods and services even if another company changes the style or design of your name. An example of a standard character mark is the word “Starbucks.”

Special Form Marks – Some refer to this as a design mark. This type of mark, typically used for logos, claims special characteristics such as design elements, color, style of lettering or even an unusual form of punctuation. Registering this type of mark protects that specific design of the artwork, font, style, color, or visual representation. If the business believes their logo has a distinctive attribute that is significant to their overall commercial impression, then the business would want to claim that attribute (i.e. color or feature) as part of the trademark. Examples of special form marks are the McDonalds golden arches or the Nike Swoosh logo.

Special form drawings – Special form drawings are required in situations where:

• The mark that contains characters not found in the USPTO's standard character set.

• If business believes their logo has a distinctive attribute (i.e. color or feature) that is significant to their overall commercial impression and they want that distinctive attribute as part of the trademark. 

• If the business in not claiming color as a feature of the mark, then the mark should be presented in black and white (and the applicant will have the choice of using any colors).

Combined Mark – A combined mark is a type of mark that includes two different elements - one is text, and the other one is graphics. The text is usually in a stylized form to match the brand identity. If a business can only file for one mark, it should be the combination of the image and the name. An example of the combined mark is the McDonalds golden arches with the word “McDonalds” underneath. 

Composite Mark - A composite trademark is a special symbol, word, or logo that a company uses to show that their product is recognizable, associated with a brand, and is different from others. It's like a signature for a product used in advertising.  Examples of composite marks are McDonald’s “I’m Loving It” or Nike’s “Just Do It.” 

Will My Business Name or Logo Be Registerable? 

The standard used by the USPTO for granting these marks is “the likelihood of confusion.” The two most important factors are the similarity of the marks and the relatedness of goods and services. Similarity involves the spelling, appearance and meaning of each mark. Relatedness of the goods can be determined by the following factors:

• Does a competing business or trademark offer similar goods or services under a same mark?

• Do your marking methods overlap with the marketing methods of a competing business with a same mark?

• Are the goods covered by your mark complementary to the goods of the competing business with the same mark?  

In a nut shell if two marks are highly similar, the USPTO will find that there is a likelihood of confusion and not grant the mark. But if the goods or services are very different you may be able to register your mark. 

When determining whether or not to give you a trademark, the government will compare the marks in their entirety. Greater weight is given to the dominant elements of the mark when comparing it to all other marks in the registry. Wording in a trademark is often considered a dominant element because when customers refer to a business, they usually refer to it by name.  

In our next blog we will discuss the trademark application process. 

If you have any questions regarding trademark law or the federal process used to obtain a trademark, we would be happy to help.