How to Trademark a Logo: Common Pitfalls and Keys to Success
Why Trademarking a Logo is Important
Logos are valuable business assets uniquely capable of representing and generating goodwill for your company, business, or brand. Often, significant amounts of time and money are spent in the creation, development, and implementation of a company logo. However, many business owners are unsure about how to trademark a logo and what steps to take for federal registration. Is it really necessary to register a company logo with the United States Patent and Trademark Office (“USPTO”)? If so, what are the most common pitfalls and what can a business do to ensure a smoother process to registration? The answers to these questions will differ from case to case, but there are some common pitfalls and keys to success that apply to most cases.
Do I Really Need to Register My Company’s Logo with the USPTO?
As with all trademark rights, the actual right in and to the intellectual property arises out of the use of the mark – here, the logo. Thus, if you design the logo and then use it on behalf of your company, you have trademark rights in and to that mark. (As an aside, if you commission the creation of the mark, or pay another to design the mark for your company, you will need to ensure a transfer of the ownership in the mark to your company from the third-party designer). This is known as having “common-law trademark rights.” However, federal registration of a trademark with the USPTO confers additional rights and protections not available under common law. For example, registration of a logo with the USPTO on the Principal Register offers the following benefits and protections:
The right to enforce your trademark against others in federal court
Public notification of your mark and your rights in and to your mark
The legal presumption that you own the registered mark and have the exclusive rights to use it in connection with the goods and/or services in your registration
Easier registration of the same mark in other countries.
You may prevent (or halt) the importation of goods bearing your mark into the U.S.
Given these benefits and the costs associated with developing a company logo, federal registration is usually advisable.
What Are the Common Pitfalls to Registering a Logo?
As with all trademarks – whether a word or design mark – there are common traps that can prevent federal registration, including the use of a generic or descriptive mark, choosing a mark too similar to another registered mark, incorporating or including geographically descriptive elements in your mark, a merely ornamental mark, or failing to properly classify your goods and/or services.
Generic or Descriptive Marks
Marks that are considered “generic” are not entitled to trademark protection and cannot be registered with the USPTO. In the context of a logo, this could be a fruit juice company whose logo is a generic apple or a shoe company utilizing basic clip art of a sneaker. Similarly, a descriptive or geographically descriptive logo is one that includes textual or other visual images or components that communicate the type of goods or services associated with the mark or the geographic location or region where goods or services are to be offered under the mark. For example, if the Apple computer logo were used in connection with an apple orchard or applesauce company, it could be refused registration on the basis that it is too descriptive of the goods and services to be offered under the mark. A logo that merely incorporates a business’s name and location runs the risk of the same outcome. Conversely, the use of the Apple logo in connection with computers was completely arbitrary (prior to its fame) and would not be considered descriptive. The important thing to consider in designing a logo is that it must contain unique or creative elements that consumers will come to associate with your goods or services without telling your consumers what those goods and services are. For this reason, it is often a good idea to avoid commonly used icons or even emojis when designing a logo. Creating distinctive graphical elements and/or characters within a logo will result in a much stronger mark and increase your chances of securing federal registration.
Choosing a Logo Too Similar to a Registered Mark
Since the purpose of trademark protections is to allow the owner of a trademarked logo to protect its mark from copying or counterfeit use by another, attempting to register a mark that is too similar to an existing federally registered logo will trip you up and can result in a refusal to register your mark. This can be true even if the mark you have created is truly unique and creative. If someone else has already used a similar logo in connection with the same or similar goods or services, your registration is likely to be refused. Determining whether existing federally registered logos are similar to your own can be tricky and this, perhaps more than any other aspect of registering a logo, can be the most challenging. Depending on the size and scope of your intended use of the logo, it is usually advisable that you consult with an intellectual property attorney prior to adopting and launching a logo to help ensure you are not unwittingly infringing an existing mark. IP attorneys are trained in how to run a search of existing logos and can help identify ensure complete and accurate results of most value and interpret those results into opinions on risk of use and registration. Identifying similar marks early in the process will allow you to make modifications to distinguish your logo from the existing registrations and can ensure a much less complicated process to registration.
Choosing a Mark That Is Merely Ornamental
The process of registering a logo as a trademark involves not only the general appearance of the logo, itself, but also how the mark is used. To constitute “use” for purposes of trademark registration, the mark must be in commerce and visible on goods or, with regard to services, must be visible at the point of sale – as in on a website where the services can be purchased. A mark or use of a mark is considered “merely ornamental” and may be refused registration on that basis if the logo is used to adorn a product – clothing, a journal, pens, etc. – but does not appear to point to the source of the product. This often occurs in the context of clothing where a logo appears on the front of a t-shirt but cannot be distinguished from any other design portrayed on clothing. Usually, this can be avoided by including the logo in the tag sewn into the item of clothing or including a hang tag clearly demarking that logo as representing the source of the t-shirt.
Failing to Properly Classify Goods or Services
Yet another common pitfall in attempting to register a company logo is failing to properly classify the goods or services associated that the logo. When submitting a trademark application to the USPTO, the owner of the mark must identify the specific classes—or categories—of goods and/or services on which it is or intends to use the applied-for-mark. There are 45 total classes – Classes 1 through 34 cover goods and Classes 35 through 45 apply to services. As an initial matter, choosing the correct categories is essential to ensuring you have adequate trademark protection over all the ways in which you use or intend to use your mark; if you are using the mark in a way that is not described in your application and registration, you may not have protection over that use. Still further, properly classifying your goods and services is necessary to efficiently navigate the registration process as well. If the Examiner assigned to review your application believes the wrong classes have been identified, it can delay registration. And if your application is ever found to contain inaccurate information, you could be denied or lose your registration. This is another aspect of the trademark registration process where you may be best served to work with a knowledgeable trademark attorney.
Keys to Success
In light of these common obstacles to registration, what can you do to ensure your path to registration is as efficient and successful as possible? The keys to successfully registering a logo can include the following: (1) consulting a trademark attorney from the beginning and involving them in logo selection, (2) conducting a trademark search (or having your attorney conduct one) to avoid selecting a logo that is too similar to a registered mark, and (3) clearly defining your use of the logo and ensuring that you continue to use it consistently and accurately throughout the application process.
Consult a Trademark Attorney to Ensure Your Logo is Neither Generic Nor Descriptive
Registering a company logo can present unique challenges, particularly since the descriptive type of logo that is most easily recognized and identified by consumers (from a marketing perspective) may be refused registration if it is too descriptive or even generic. Working with a trademark attorney from the development stage can help you navigate this dichotomy and ensure you design a logo that is easily recognizable while also registrable.
Run a Trademark Search for Similar Logos
As mentioned above, searching for other uses of a logo can prove challenging. Still, conducting your due diligence is necessary to ensure that you do not select a logo that not only may be difficult to register, but could subject you to penalties for trademark infringement. Most trademark attorneys have training and experience specific to searching for logos and other graphic art and are likely the best situated to assist with this important step. Depending on the results of any given search, your attorney can assist in revising or revamping the logo to avoid confusion with an existing mark, both in an effort to make the registration process smoother and to increase your chances of successfully obtaining registration.
Define Your Use Accurately and Use the Logo Consistently
Finally, consulting with a trademark attorney to determine the proper scope of your use or intended use related to a logo, and ensuring the categories of goods or services are properly and accurately identified in the application, will go a long way toward avoiding unnecessary speed bumps in the registration process.
Additionally, as important as properly defining the scope of your use is the need to ensure proper and consistent use of your logo throughout the registration process. For example, when a logo includes text, all use of the logo going forward must include the same text, in the same location in relation to any graphic or other images. That means that if your application consists of an image with specific text to the left of the image, your use of the logo going forward must always show the text to the left of the image. This is because any material alteration to a logo renders it a new logo in the eyes of the USPTO. A scenario we encounter frequently involves a marketing department’s update to a company’s website that includes “tweaks” to the company logo while an application for that logo is pending. Depending on how the logo is altered, the Examiner may see the revised image on the website while reviewing the application and reject it on the basis of “no use in commerce.”
While navigating the process of federal trademark registration for a company logo can be tricky, avoiding the common pitfalls and utilizing these keys to success can help ensure your process is as efficient as possible and, ultimately, increase your odds of securing registration.
Klemchuk PLLC is a leading IP law firm based in Dallas, Texas, focusing on litigation, anti-counterfeiting, trademarks, patents, and business law. Our experienced attorneys assist clients in safeguarding innovation and expanding market share through strategic investments in intellectual property.
This article is provided for informational purposes only and does not constitute legal advice. For guidance on specific legal matters under federal, state, or local laws, please consult with our IP Lawyers.
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