Should I File a Trademark Application to Protect My Word Mark, Design Logo, or Both?
More often than not, a company’s brand is a composite trademark consisting of both words and a design/logo. Here are a few examples:
So it’s not surprising that one of the most common questions clients ask their trademark attorney is whether they should file a trademark application to protect just the words in their trademark, just the logo, or both the words and logo. The initial answer is all three if you can afford to file three trademark applications. Otherwise, most of the time the answer is just the words, sometimes the answer is the words and the logo, and rarely the answer is just the logo. The thinking in favor and against each of these possibilities is explored below.
The Case for Standard Character Marks (aka Word Marks)
1. Protect Just the Words Because You Might Change Your Design Logo
The design elements of your trademark are more likely to change over time than the literal elements of your trademark. When brands are updated or modernized, it’s often the logos (i.e., the design component) that gets tweaked or changed, not the word mark. This can create a big problem if you only filed a trademark application for the design mark and did not bother to file a trademark application to protect the word mark.
Examples help. There are hundreds, if not thousands, of examples that we could use. But we only need one. Let’s use Pepsi. As you can see below, Pepsi’s logo has changed dramatically throughout the years. Sometimes with small tweaks, such as the changes depicted between 1905-1951 and 1971-1987. Other times, the change has been a substantial redesign of the logo such as the updates in 1962, 1971, 1991, and 1998.
If you look at Pepsi’s logo since 1962, there’s really one constant—the word Pepsi. Obviously, the design has changed significantly. So, let’s say that Pepsi had filed a trademark application for the Pepsi design logo as it appeared in 1962 and obtained a trademark registration for the 1962 Pepsi design logo in 1962. Pepsi would then need to renew its trademark registration 10 years later in 1972 and provide the USPTO with a specimen showing that its 1962 Pepsi design logo is still in use. Of course, the problem is that, by 1972, Pepsi had transitioned to a new Pepsi design logo that was materially different. Assuming Pepsi had completely discontinued use of its 1962 Pepsi design logo, this means that Pepsi would not have an acceptable specimen to renew its trademark registration for the 1962 Pepsi design logo because the 1971 Pepsi design logo is a different design and would not be accepted by the USPTO as a specimen for the 1962 Pepsi design logo. This would then result in the cancellation of Pepsi’s trademark registration for the 1962 Pepsi design logo.
And if Pepsi had not filed a trademark application for the word Pepsi in standard characters (i.e., protecting just the word Pepsi without the accompanying design elements), then when 1972 rolls around and its trademark registration for the 1962 Pepsi design logo gets cancelled, Pepsi would be left without any federal trademark registration protecting the Pepsi name.
The beauty of the standard character trademark is that the converse is not true. If Pepsi had filed a trademark application for the word Pepsi in standard characters in 1962 and obtained a trademark registration for the word Pepsi, any of the Pepsi design logos between 1962 and the present could be used as a specimen to support both the initial trademark application and any subsequent renewals of the trademark registration.
Designs come and go, but standard characters are forever (or something like that). This is a good reason to choose to file a standard character trademark application instead of a design trademark application if you cannot afford to do both.
2. When It Comes to Trademark Law, Words Are Generally Considered More Important
When it comes to trademarks, federal courts, the U.S. Patent and Trademark Office (“USPTO”), and the Trademark Trial and Appeal Board (“TTAB”) all agree that, when a mark consists of both words and a design, the literal element (i.e., the words) constitutes the dominant portion of the trademark. Part of the rationale for this principle is the fact that, when consumers ask for the good or service by brand, they do so by referencing the words that comprise the mark, not the logo. As a result, greater weight is accorded to words than designs. This, in turn, means that when the court, USPTO, or TTAB is determining whether there is a likelihood of confusion between two marks, it is emphasizing the literal elements of both marks in its comparison. This well-established rule of trademark law weighs heavily in favor of filing a standard character trademark application for just the words if you can only file one application.
The Case for Design Marks For Only a Logo
This is a hard case to make if your mark does contain words. If your mark only contains a design, then obviously go ahead and file solely for the design. Otherwise, a trademark application for a design only is probably going to be a second or third trademark application rather than the first choice. If you already filed a trademark application for the words and logo together but received a likelihood of confusion refusal due to the literal element of your mark, you might consider filing a trademark application for just the design so that you can get something registered. But remember that you’re only protecting the design, so someone else would have to be using the identical or a highly similar logo in connection with related goods or services to trigger a likelihood of confusion refusal or infringement.
The Case for Design Marks for Words and a Logo Together
1. There Is a Crowded Field of Similar Word Marks
Yes, generally speaking, words are the more important component of a trademark. But sometimes the word component of your trademark may be an obstacle to registration. If there are a lot of other already registered trademarks or pending trademark applications for marks that are identical or highly similar to the word portion of your trademark, then chances are that the Examining Attorney assigned to your application will issue a likelihood of confusion refusal based on one or more of the already registered or prior pending trademarks. In such circumstances, having a distinctive design component to your trademark could help you either avoid the likelihood of confusion refusal altogether or at least give you the additional argument that your design serves to distinguish the marks from each other such that there is no likelihood of confusion.
2. It Protects Your Entire Trademark in One Application
If the trademark that you are actually using most of the time is a composite mark consisting of both words and a logo, there is something reassuring about filing a trademark application to protect the trademark that you actually use in the marketplace rather than just part of the mark. Moreover, you get more bang for you buck. For the price of one trademark application, you get to protect both the literal portion of your mark and the design portion of your mark. Of course, on the other hand, if your mark is cited against a third party’s trademark, the third party could try to argue against any likelihood of confusion if its mark is only similar to one of the components and not both. If you are confident that you’ll be sticking with the design logo, this is not a bad way to go. The USPTO puts more emphasis on the literal portion of a trademark anyway, so it will not be easy for a third party with a similar word mark to overcome a likelihood of confusion refusal solely because your trademark contains a design while their mark does not.
Ideally, if you can afford it, you should file three separate trademark applications: (i) a standard character application for just the words, (ii) a design application for the words and the logo together, and (iii) a design application application application just the design. And most of the time I would prioritize the applications in this order.
If your budget does not allow for three applications, then you should choose between a standard character application for just the words and a design application for the words and the logo together. If there are already a lot of trademarks registered or pending at the USPTO consisting of the identical or similar words as the words in your mark, you may want to start of with a design application for the words and logo together because the logo will help you differentiate your mark from the existing marks and help you avoid or overcome a likelihood of confusion refusal. But in almost all other situations, you should probably start by filing a standard character trademark application.