Updated: September 20, 2022
The short answer in most cases is both.
As a business owner, you may be looking to strengthen the protection of your brand – but you may not know the difference between trademark protection for your business name and your logo. Should you trademark your business name and logo? Business owners may have the following questions: How do I best protect my brand? Is a trademark for my name and for my logo the same thing? Which should I trademark first? In this article, we will answer these questions and provide a broad overview of the difference between obtaining a federal trademark registration for a name versus a logo.
TRADEMARK PROTECTION
Generally speaking, a trademark can be a word, phrase, symbol, design or a combination of these that identifies an individual’s or entity’s brand. A brand can be represented in various ways, including a business name, a catchphrase or a stylized image. For example, the name “Nike” and Nike’s “swoosh” logo both represent Nike’s brand. Nike uses these trademarks for the sale of items in different categories, such as shoes, athletic clothing, and more.
Each of these trademarkable items is considered a “mark.” The key to obtaining trademark law protection is using the mark in commerce for the sale of particular goods or services. Using the marks in commerce gives you default rights under trademark law, but registering your trademarks with the United States Patent and Trademark Office (USPTO) gives you added protection and puts the public on notice that these marks represent your brand.
So how do you best protect your marks, the same way Nike and other companies protect their names and logos? First, you should understand the difference between these two types of trademarks.
WORD MARKS
A “word mark” is a trademark that is a word or phrase. This type of trademark protects the words themselves, rather than how the words appear in a design or an image. The USPTO calls this a “standard character mark.” A word mark registered in standard character format (i.e., not in any specific font but in plain text) entitles the owner to the exclusive use of the words in the applicable categories of goods and services.
For example, consider Google. When you enter Google’s website, you see their name presented in a specific font – this font is called Product Sans. But Google is not limited to using its name in Product Sans only; Google’s word mark protection gives them exclusivity over the term “Google” itself within the categories of goods and services they engage in.
You can also differentiate word marks by the way clearance searches are conducted. A clearance search is typically done before filing a trademark application in order to: (1) evaluate the availability of the mark, (2) assess the likelihood that the USPTO will reject registration based on potential confusion with an existing mark, and (3) identify the risks of others opposing the mark or claiming trademark infringement. A clearance search requires searching for marks that are similar in appearance, sound, meaning, and commercial impression. For a word mark, this search involves looking for similar words, sounds, spelling, pronunciation, and other linguistic elements. For example, someone looking to register “Apples” or “Appel” for the sale of computers would likely face rejection or opposition for being too similar to the existing brand “Apple.” Even the word “Pomme” for the use of computers could be rejected or opposed for being a foreign equivalent of the English word “Apple.”
DESIGN MARKS
A “design mark” is an image or stylized word design that creates brand recognition. This type of trademark protects the visual elements of your brand – i.e., your logo. This type of trademark can be registered with or without the brand name incorporated into it. For example, consider McDonald’s golden arches design. This arches logo is registered as a trademark separate from the company name “McDonald’s.” When applying for registration of a design mark, submitting the image in black and white standard form allows you to use the logo in any variation of color. However, if the color of your logo is an important factor in how your brand is recognized, then you may want to submit your logo with that specific color to protect your use of it.
Clearance searches for design marks are typically more complicated. Not only do you have to search for similarities in the literal elements (i.e., letters and numbers), but you also have to search for similar design elements such as shapes, lines, colors, and other visual elements. For example, if you were searching for design marks similar to the Adidas logo, you might search for “stripes” and “lines.” The USPTO assigns design codes for various design elements, so these searches can get quite complex.
SHOULD YOU APPLY FOR BOTH?
As a business owner, you spend a lot of time marketing and building up your brand. You make a name for yourself, and you may spend loads of money on designing the logo that is perfect for you. You would not want someone to free ride on your goodwill, and you would definitely not want your customers to confuse someone else for you and take away your business. For this reason, it is often recommended that a business owner applies for trademark registrations for both the business name and the logo.
Word marks and design marks represent two different aspects of your brand. Trademarking your brand name alone may not sufficiently protect your logo from being used by someone else. Conversely, registering only your logo, even if it contains your brand name in words, may not protect the name itself. If someone counterfeits your goods or services using both a similar name and logo, you want to have the advantage of the protection under both a word mark and a design mark.
If you have to start somewhere but only have the budget for one application upfront, it is generally ideal to protect your brand name first. A brand name is typically least likely to change over time, and a word mark often provides broader protection than a design mark. A business that anticipates changing its logo in the near future may want to consider locking in the registration for the word mark first since the new logo would require a new application anyway. If you are planning to rebrand your name and logo altogether, you may wish to submit an intent-to-use application for the marks you are certain you will use.
In addition to trademarks, you should also consider copyright protection for your brand.
Of course, every business is different, and your specific brand may have nuanced implications under trademark law. You may wish to consider consulting an experienced trademark attorney to assist you with your trademark applications or clarify any concerns you may have about brand protection.
Carlianna Dengel is admitted to practice law in New York and California.
