{4:00 minutes to read} Like most answers to legal questions, the answer to this article’s title is, it depends. Filing separate applications to cover each element of your branding, which can include words, slogans, design elements, stylization, even product design, and color, would provide you the strongest legal protection. However, not every company has the financial resources to do this. If you have a tight legal budget, are a newly formed business, or a business that often refreshes its branding to keep up with current trends, it may make sense to focus your protection strategy on the name of your company, brand, product, or service — and to hold off on filing for protection of other elements until a later time.
When you file an application for “word(s)” only, no stylization or design elements, with a claim that the trademark is made up of standard characters, your protection will extend to use of your trademark in any font, color, size, capitalization, stylization, et cetera. For this reason, companies will often start with protecting their names in standard characters. This is a situation specific analysis, however, which depends in part on the results of the trademark availability search.
I don’t want to downplay the benefits of filing multiple trademark applications to cover as many protectable elements of your branding as possible, including logos. This is especially true if your logo is unique and/or is often alone, without any wording, to identify your business. For example, social media icons. Facebook’s “f,” Instagram’s “camera,” and Twitter’s “bird” are each important source identifiers. If you will rely on a distinctive icon as part of your brand strategy, it would make sense to file a separate trademark application for that icon.
But keep in mind that to maintain your trademark registration for a logo, icon, or other design, you must continue to use that logo, icon, or design in the substantially same form that you included in your trademark application. Generally, you can’t go back and change the visual representation of your trademark in the U.S Patent and Trademark Office to match how you are using it on your website. If you include a design element in your trademark application, and that design element is later changed or removed, your trademark registration will no longer protect you and will eventually expire on its own or be canceled due to a third party challenger. This is another reason why new companies will often initially rely on trademark protection for their brands in standard characters and hold off on filing for protection of other elements until they are confident that they will continue to use these elements long term.
Again, this analysis can only be made on a case by case basis, taking into account many factors, including a company’s tolerance for risk. A trademark registration is a valuable asset and non-textual branding elements are becoming more important as naming becomes more difficult. As noted by the New York Times back in 2015, “[a]lmost every naturally occurring word has been claimed.” But, obtaining protection for your name in standard characters is often the best place to start.
If you have questions about an appropriate trademark registration strategy for your company, please reach out to us at info@trademark-counsel.com.
Kelly Weiner
Trademark Counsel
Law Office of Kelly Weiner PLLC
175 Varick Street, Fl 6
New York, New York 10014
(E) info@kellyweinerlaw.com
(P) 212.360.2307