Do you recognize those small superscript symbols located beside brand names and logos? The “™” and “®” symbols signify trademarks and registered trademarks, respectively. Familiarizing yourself with these essential tips for trademarking a logo can be incredibly beneficial, saving you valuable time, money, and potential headaches as your brand expands.

By merely possessing a logo, you automatically possess what is referred to as a common law trademark for it. This implies that, even without formal paperwork, you hold the exclusive legal authority to use and modify the logo as you desire. However, without an officially registered trademark, this right is not as robust as it could be. In this section, we address the key inquiries regarding the process of trademarking a logo.

Infringement occurs when someone uses your intellectual property without authorization. However, the Fair Use Doctrine in the US allows certain exceptions where others can use your intellectual property without your consent.

Trademark basics

What is a trademark?

A trademark is a legal classification that safeguards a specific piece of intellectual property from unauthorized use or infringement.

Let’s delve into the details.

Intellectual property encompasses various forms of original creations. It can encompass a wide range of items: a drawing, a song, an innovation, a distinctive process, a novel, a movie, an invention, the code you’ve developed, a recipe, and in specific cases, an application of a scientific discovery.

When you create something, it becomes your intellectual property, granting you extensive control. You decide whether to sell it, whom to license its use to, the conditions for the license, and the associated costs for the licensee. Additionally, you retain control over potential adaptations, such as sequels or expansions.

Unauthorized use of your intellectual property

Infringement occurs when someone else uses your intellectual property without your consent. However, certain situations are exempted under the Fair Use Doctrine in the US, allowing others to use your intellectual property without permission.

Apart from these exceptions, any unauthorized use is illegal, and as the owner of the intellectual property, you have the right to take legal action against infringers. For every designer, it is essential to have a basic understanding of intellectual property infringement.

How is a trademark different from a copyright?

 

A copyright and a trademark serve similar purposes, but they protect distinct types of intellectual property:

Copyright shields artistic works such as novels, visual art, short stories, character names, fictional worlds, songs, code, and other creations primarily not intended for commercial use.

In contrast, a trademark safeguards intellectual property explicitly used for commercial purposes, like brand names, logos, taglines, and slogans.

 

What does a trademark protect?

 

A trademark secures your ownership of intellectual property. Once you create and use a logo, you inherently have exclusive rights to its use and can legally address any infringement. However, registering your trademark enhances these rights and provides additional legal safeguards.

In the United States, trademarks are registered with the United States Patent and Trademark Office (USPTO), while other countries have comparable agencies offering similar trademark protection.

When you register a trademark with the USPTO, you gain the following rights and protections:

•  The authority to initiate legal proceedings against suspected trademark infringement in federal court.
•  Public notification of your trademark registration.
•  Legal presumption of ownership, granting exclusive rights to use the trademark in connection with the goods and/or services specified in your registration.
• Simplified procedures for registering your trademark in other countries.
• The ability to prevent the importation of foreign goods that violate your trademark.

What can’t it protect?

 

A trademark cannot provide exclusive rights to generic terms. For instance, you cannot trademark a name like “Juicy Oranges” for your business and its associated logo.

Moreover, a trademark cannot prevent others from using your intellectual property in accordance with the Fair Use Doctrine. Generally, Fair Use permits others to use trademarked and copyrighted work in ways that do not cause consumer confusion.

 

Is a trademark enforceable around the world?

 

No. Registering your logo as a trademark provides protection exclusively in the country where you filed the application. While obtaining a trademark in one country can simplify the process in other countries, you must individually apply for separate trademarks in each country where you desire legal protection for your logo.

 

Who owns a logo trademark?

If you design your own logo, you automatically own the trademark rights. Alternatively, when you hire a designer to create a logo for you, the trademark is transferred to you upon purchasing it from them. Typically, a Transfer Agreement is signed by both parties to formalize the transfer.

As the trademark owner, you have full control over where the logo appears, how it is updated or modified, and who may obtain licenses to use it in their own materials.

 

The process of trademarking a logo

Can I trademark my own name?

Yes. However, it needs to be for a business-related purpose.

Let’s say your name is Emily Keller, and you create custom resin earrings. You can absolutely trademark a business name like Emily Keller Jewelry or Earrings by Emily.

But in this instance, trademarking your name only protects your intellectual property in the business category you’re working in. If there’s another Emily Keller out there and she decides to trademark her photography business’ name, Emily Keller Photography, she can absolutely do that without worrying about infringing on your copyright.

 

Does my logo qualify for trademark protection?

If your trademark is robust and distinctive, it will likely be accepted. However, if it lacks sufficient strength, the USPTO (or your country’s trademark office) may reject it.

 

What constitutes a strong logo?

In the realm of intellectual property, a strong logo or name possesses unmistakable uniqueness, like made-up names such as Microsoft and Google, or words and symbols unrelated to the attached product or service, like Apple computers or White Castle hamburgers.

On the other hand, a weak logo or name is generic (such as an icon or emoji) or merely descriptive of the product or service, like Delicious Ice Cream, Trustworthy Law Firm, or Gray Brick Daycare Center.

How long does it take to trademark a logo?

Typically, the process of trademarking a logo requires around six to nine months from the initial filing to issuance. In some complex cases, it may extend up to three years.

What does it cost to trademark a logo?

The expense of trademarking a logo differs depending on the country. In the US, registering a logo with the USPTO can range from $275 to $660, in addition to legal fees. Opting for a state trademark office, providing protection limited to a specific state, usually costs between $50 and $150 for logo registration.

 

What does the process of trademarking a logo involve?

 

Before applying for trademark registration, it’s crucial to search your country’s and state’s databases to check for any similar logos already in use by other companies. The internet can also aid in identifying common law logos that might not appear in official databases. Thorough research is essential for all names and images you’re considering, as a logo resembling an existing brand could lead to rejection, necessitating a restart of the process.

Once you’ve ensured your logo is distinct from others, proceed to file a trademark application with your country’s trademark office, such as the USPTO in the US. The application then undergoes a review by the USPTO.

 

At this stage, two possibilities exist. Firstly, the trademark office may find your logo eligible for trademarking and proceed to issue it for publication, leading to registration. Secondly, the office may identify one or more issues with your logo and take office action. If your logo faces rejection, you will be informed of the reasons and provided with a six-month window to respond. Upon resolving all issues, the trademark office may approve and publish your logo. Alternatively, if the problems remain unresolved, another office action will be taken, granting you another six months to respond.

After a second office action, the fate of your logo hinges on whether it satisfies the trademark office’s criteria for trademarking a logo. It may either be published or rejected based on the office’s assessment.

 

Do I need to work with a lawyer to trademark my logo?

 

NO.  you can definitely choose to handle the trademarking process for your logo on your own.

However, there are advantages to working with a lawyer specializing in intellectual property. An experienced lawyer can handle the entire trademark application and paperwork for you, saving you time, energy, and the potential risk of errors. Their expertise in handling similar cases multiple times before ensures a smoother and easier process for you.

 

What if my trademark application is rejected?

 

There are several potential reasons for the rejection of your trademark application. These include:

1. A generic logo.
2. A high likelihood of consumer confusion with an existing trademarked logo.
3. A logo considered mere ornamentation rather than a genuine identifying mark.
4. Offensive verbiage or imagery (with exceptions for certain cases where such material can be trademarked).
5. Geographically misdescriptive imagery or text that inaccurately implies your company or product is based in or sourced from a specific location.

 

In case of a rejection you believe is unjustified, you can appeal to the trademark office for a review, with the hope of gaining acceptance. However, if your logo doesn’t meet the criteria for trademarking, you’ll have to start afresh and design a new logo before attempting another application.