Potential clients frequently ask me whether they should trademark a name and logo together in one application. Well, here’s the answer. If the name of your product/service is distinctive (i.e. a name that’s eligible for registration on the Principal Register and not only on the Supplemental Register), there’s almost no benefit to applying to register your name and logo together. In fact, the only benefit is that you’ll save money by filing one trademark application with the United States Patent and Trademark Office (USPTO) rather than two. But, is saving a few hundred dollars really a good enough reason to seek registration of your name and logo together rather than separately?
Why You Shouldn’t Trademark Your Name and Logo Together
One thing I’ve seen during my many years of working with small businesses and organizations is that their logos tend to change over time, whereas the names they adopt for their products/services tend to remain the same. It’s not unusual for logos to undergo significant redesigns to keep pace with the evolving tastes and preferences of the general public or a particular demographic of consumers.
If you only own a trademark registration for your name and logo together, and you end up changing the logo sometime after the USPTO issues the registration, here’s the unfortunate chain of events that will likely occur:
- If the change to the logo would be considered a “material alteration” (which is often the case with a logo redesign), you won’t be allowed to amend your trademark registration to reflect the revised logo.
- If you can’t amend your trademark registration, then you won’t be able to file the Section 8 Declaration of Use or Section 8 and 9 Renewal when it comes time to maintain/renew your registration.
- If you can’t maintain/renew your trademark registration, then your registration will be canceled by the USPTO. You’ll lose all of the benefits and protections of your registration, as well as the many years of nationwide priority you had in your trademark dating back to the filing of the original trademark application.
- If your trademark registration is canceled, then you’ll have to file a brand new trademark application for the revised name/logo combination. But, your nationwide priority rights will only begin on the date you file the new application. This means someone else could have acquired common law trademark rights between the time your registration was canceled and your new application was filed. It’s also possible someone else could have filed a trademark application for a similar name/logo in that span of time, which would make it extremely expensive and time-consuming to obtain a registration for your name/logo.
As you can see, owning a single trademark registration for the name and logo together can result in a loss of trademark rights and increase the risk of others securing common law rights in a confusingly similar name/logo. The good news is that all of this can be easily avoided.
Why You Should Trademark Your Name and Logo Separately
In contrast, here’s what would happen if you end up changing your logo, but you own one trademark registration for just the name and a separate trademark registration for just the logo:
- If the change to the logo would be considered a “material alteration” (which it almost always is), you won’t be allowed to amend your trademark registration for the logo to reflect the revised logo.
- When it comes time to file the Section 8 Declaration of Use or Section 8 and 9 Renewal, you won’t be able to maintain/renew your trademark registration for the logo. That registration will be canceled by the USPTO.
- However, you will be able to maintain/renew your trademark registration for the name, thereby preserving all of the benefits and protections of your registration, as well as the many years of federal priority you have in your trademark.
- You have the option of filing a brand new trademark application for the revised logo. But, whether you do so or not has zero effect on your trademark registration for the name.
As you can see, if you trademark your name and logo separately, you can continuously maintain your federal trademark rights in the name regardless of any modifications you make to the logo.
Therefore, if you only have the budget to file one trademark application, I would strongly suggest applying to register just the name without any logo.
When Would You Want to Trademark a Name and Logo Together?
Having said that, there’s one situation where I almost always recommend applying to register a name and logo together in one trademark application. That situation is when the name is “non-distinctive” and has not yet acquired distinctiveness or “secondary meaning” in the minds of consumers. In that case, if you trademark the name and logo together, you’ll avoid a refusal (such as a merely descriptive refusal or surname refusal) and your trademark will remain eligible for registration on the Principal Register rather than on the Supplemental Register.
Do You Have Questions or Concerns?
I’m experienced US trademark attorney Morris Turek. If you have questions about whether it makes sense to trademark a name and logo together in one application, please contact me right away for your completely free consultation. You can reach me direct at (314) 749-4059, via email at morris@yourtrademarkattorney.com, or by submitting my contact form located at the bottom of this page. I look forward to hearing from you soon.