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If you’ve designed a logo for your business, you likely invested significant time and energy to create a distinct, recognizable, and memorable symbol that visually represents the product and ethos of your company. Presumably, you’re protective of that logo, and would prefer that others are unable to copy your hard work without consequence. If these sentiments ring true for you, it might be time to trademark your logo, a process that provides legal shelter for your design. Let’s examine the specifics of this endeavor.
There are different types and levels of legal safeguards you can seek for your logo, and the most stringent protections also involve the most lengthy and costly processes. Before you jump into any trademark procedure, though, ask yourself whether you’re married to the logo that you’ve selected. If there’s any chance that you might want to redesign your logo in the foreseeable future, you’ll want to hold off on applying for a trademark, as you’d have to repeat such proceedings.
Consider also whether your company has the resources to engage in litigation for trademark infringement in the next year or two. If the answer is no, put aside the issue of a logo trademark for now. You probably have more pressing matters to address while your business grows. If you think you’re ready to apply for a trademark, let’s dive into the particulars.
Does your business need a trademark, copyright, or patent? That depends entirely on the type of material you wish to legally safeguard against unauthorized use.
A trademark is exactly what it sounds like, a “mark” of a “trade”—so one can trademark things like a company name, slogan, or logo.
If you want to protect the creative content of your magnum opus—such as a movie, song, or manuscript—you would seek out a copyright instead.
Finally, if you wish to safeguard an invention against infringement, you need a patent. A utility patent guards the intricacies of how something works, whereas a design patent protects how something looks.
Note that no legal protection exists for ideas in and of themselves. You must manifest your idea in concrete form before it’s eligible for a trademark, copyright, or patent.
In the case of a logo, a copyright or patent would be inappropriate—as a logo is not considered a creative work or a unique invention. We’ll now review the types of trademarks that may be applicable to your logo.
Begin to use your logo in the course of everyday business activities, and you are automatically entitled to certain regional protections under common law. Such rights vest the first time you utilize your logo in a commercial context. For example, the first time you displayed the logo on your website doesn’t count, but the moment you sold an item with your logo on it does.
You might have noticed items marked with a ™ (a trademark, which is used for goods) or ℠ (a service mark, which is used—just as you would imagine—for services), and these symbols suggest that someone asserts legal authority over that logo, slogan, etc. These marks do not indicate, however, that any state or federal agency grants that authority, so these businesses are open to trademark infringement from anyone outside their local area. Only the coveted ® symbol shows that the recipient holds a federally registered trademark, which affords legal protection that we’ll explain later.
The common law trademark option is the least costly, but affords minimal protection. You’d likely win a lawsuit in your local jurisdiction against someone who copied your logo, but go elsewhere and you’re sunk.
If you plan to conduct business exclusively within one state, you might trademark your logo with that state. The Secretary of State’s office where your business is domiciled typically receives these applications, and such registration allows for exclusive use of your logo within that state. Although it’s a less expensive and far simpler process than a federal trademark petition, with a state trademark your protections are once again limited to a single geographical area, and their extent will vary according to the laws of the state in question.
The final and most costly option is to trademark your logo on the federal level through the U.S. Patent and Trademark Office (USPTO). This process is quite complicated, and we’ll walk you through the basics. You can also follow the online tutorial created by the USPTO, but you risk procedural complications and untimely delays. We recommend that you seek the assistance of a trademark lawyer throughout this endeavor.
If the USPTO grants your application, they’ll place your logo on the Principal Register, which affords you the following protections:
As you can see, a federal trademark has its perks. And the larger your company, the more likely you are to both need and apply its protections. Now we’ll explore the details of the application process.
Any item submitted for trademark must not already be in use by a previous applicant or be too similar to an existing trademark. You, or your attorney, can check at the federal level whether your logo is truly unique with a search of the trademark database of the USPTO.
According to the USPTO website, one of the main reasons for the rejection of a trademark logo petition is “likelihood of confusion” with another company, which the agency explains as follows:
“One of the most common reasons for refusing registration is that a ‘likelihood of confusion’ exists between the mark in the application and a previously registered mark or a pending application with an earlier filing date owned by another party. Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source.”
Not only does the USPTO attempt to avoid any mixups among logos and brands, but they also deny any applications whose contents they find offensive. This may go without saying, but avoid obscenities or crude drawings.
The USPTO will also refuse any petition they find misleading. For instance, if a logo—in their opinion—doesn’t clearly represent the type of product it claims to sell and/or is suggestive of another sort of item altogether, they’ll reject that application. Remember that the USPTO exists to protect the rights of the business owner, but is also deeply concerned about consumer experience.
When you submit a trademark application, you must describe in detailed terms the good(s) or service(s) that your logo symbolizes. If you fail to appropriately classify your product using precisely the right words, the USPTO will deny your petition. Again, this is an area where parsing words is crucial, and the advice of a legal trademark expert can prove invaluable. You can read the manual by the USPTO on how to properly categorize your business.
The USPTO requires a commercial example of your logo in use, called a “specimen,” in order to approve your application. If your logo represents a physical product (as opposed to a service), an adequate specimen might include photographs of your logo on the actual item you sell, a picture of the packaging or tags for your product that feature your logo, or a photograph of a physical display in a store that sells your goods, where your logo is prominently featured.
Generally speaking, like the common law protections discussed above, your product specimen must demonstrate the use of your logo in the process of a monetary exchange between you and your customer—not merely the usage of your logo on your own business materials. So items like brochures, catalogues, press releases, business cards, and so on typically won’t work as appropriate specimens in the goods category, as these don’t demonstrate a reciprocal relationship with your clientele.
If you are a service provider, the rules for a specimen are a bit more relaxed. Unlike for goods, materials used to advertise your company or in the course of daily business will suffice. Such items need only show a “direct association” between your logo and the services you offer, and explain the nature of those services. A sign, invoice, stationery, or screenshots of a website where you offer your services are all acceptable specimens in this category, so long as the wording beside your logo clarifies the nature of your business.
You’ll need to submit a specimen for each type of good or service associated with your logo, if there’s more than one, along with the appropriate fees for each.
Once you’ve filed your application, you should receive a confirmation from the USPTO right away. After that, though, it’s likely to be several months before you receive further communication from the agency. In fact, the entire application process can take six months to one year, and sometimes longer—if any issues arise that require resolution.
In the meantime, you can check the status of your application in the Trademark Applications and Registrations Retrieval database. Use the serial number provided on your initial receipt to retrieve information about your petition. You can also check the current average processing times for applications.
What takes so much time? Here’s what’s happening behind the scenes.
It is solely at the discretion of the examining attorney whether your logo will be registered. If not, the attorney will contact you. If the issues with your application are minor, they may call or email you. If their concerns are more involved, you will receive a letter called an Office Action that outlines the reasons for their denial.
If the USPTO rejects your application based on an administrative or regulatory issue that you can resolve, you’ll have the opportunity to correct the problem. If the agency refused your petition because of an inherent flaw in your logo or a similarity to an existing trademark or application, you’ll have to go back to the drawing board and start the process over again.
If you receive an Office Action, you will have six months from the date of mailing to submit the requested corrections, or the USPTO will mark your application as abandoned. If your submission does not satisfy the examining attorney, they will issue a final refusal of your application. You can appeal this denial to the Trademark Trial and Appeal Board (TTAB), an administrative court with the USPTO, if you desire. Such an appeal will incur additional fees.
Should the examining attorney approve your application, your logo will be published in the Official Gazette. This regulation is a holdover from pre-internet days, and theoretically puts the public on notice that your logo is soon to be a registered trademark. If anyone believes they might be harmed by this registration, they have 30 days to file their grievances with the USPTO. Should no one file (and unless you’re a Fortune 500 company, it’s unlike that anyone will), your logo officially becomes a federally registered trademark—with all the rights and protections we discussed above.
Now that you hold a registered trademark, you can’t just rest on your laurels. To maintain your protected status, you must submit a Trademark Declaration of Continued Use and a Trademark Renewal to the USPTO every five years. Should such paperwork slip your mind, you do have a six-month grace period in which you can still file. It will just cost you a little more.
If you fail to submit these forms entirely, though, the USPTO will consider your logo abandoned and you will lose all the protections you fought so hard to gain. Bottom line: don’t let your registration slip through the cracks. There’s no limit to the number of times you can renew your trademark, as long as your logo remains in commercial use.
To ensure that no other business uses their logo improperly or without their permission, many companies engage in what’s called a trademark watch. This process requires constant vigilance to guard against the misuse of your logo, and to potential applications to the USPTO for comparable logos. The larger your company, the more you may need this type of service.
Usually, a business will hire a legal firm or other specialized company to engage in a trademark watch. These representatives will send cease-and-desist letters if they do encounter a logo that’s similar to yours, and will also engage in litigation to protect the sanctity of your logo, if necessary.
As we’ve discussed, to obtain a trademark—particularly a federal one—is a long, complex, and potentially expensive procedure. While the payoff can be substantial, ask yourself whether you’re ready to engage in this process, and if your business is large enough to require legal protection for your logo. If the answer to both these questions is decidedly “yes,” we recommend that you consult a legal professional, such as a trademark attorney, to determine what level of trademark to seek, and to ensure that your application proceeds properly through the appropriate channels. Now that you understand a bit more about how to trademark a logo, you can be informed every step of the way.