It is not uncommon for businesses to have more than one trademark. There are also different types of trademarks. It is important to understand the types of trademarks when deciding what trademark to apply for registration as it will affect the extent of protection for a business’ branding, especially if the business has just started and costs might be an issue.
Established companies have portfolios of trademarks that extensively cover their full range of branding and marketing strategies to ensure the maximum scope of protection for their businesses. Smaller companies and startups usually need to be more strategic in considering which of their brands and which types of trademark to register bearing in mind the costs related to filing and professional fees.
Words vs. Imagery
Trademarks are usually recognized as either word marks or logos/images. They can also be a combination trademark of word/s and image/s.
A classic example of a common misunderstanding for business owners is that registering a combined trademark is an economical way of protecting their brands. However, while this “shortcut” seems a cheap alternative, it may cause complications and unnecessarily restrict the trademark protection that can be obtained.
Logo trademarks are protected exactly as they were registered. Purely image or design trademarks need to be used exactly as they were registered. As such, the word and design elements of combined trademarks cannot be separated. The combined trademark does not have the same coverage of protection as that of a standard word mark.
On one hand, a trademark registration for a standard word mark can generally be supported by the use of the word mark in different fonts or stylization, and even as part of a logo so long as the design element of the logo does not interfere with the word element.
On the other hand, a registration for a combined trademark cannot be supported or maintained by the use of the word mark alone or the image element by itself. This is the reason why, whenever practicable, it is prudent to register the word mark separately from the image/design mark and also from the combined trademark that a business has.
To illustrate better, Disney Enterprises Inc. has the following trademark registrations (among other variations):
1) The standard word mark: DISNEY
2) The stylized word mark :
3) The image only logo mark of a stylized castle:
4) The combination word and image logo mark:
If a business owner can only afford to register one or two trademarks, separately registering the standard word and the image-only logo mark provides for much flexibility in the actual use of the trademarks. How the trademarks will be used while considering the possibility of updating or changing the logo in the future will matter in deciding which types of trademarks are best to be registered.
When to Consider Combined Trademarking
A trademark owner must also bear in mind that there are circumstances when opting to register a combined trademark is best. The most common and practical situations that will persuade a trademark owner to register for a combined trademark rather than separately registering word and logo marks are:
- The trademark (either word or logo) is problematic due to the earlier registration of similar trademarks owned by third parties; and/or
- The trademark is descriptive or lacks distinctiveness and cannot be registered by itself.
A combined trademark generally has more distinctiveness than its individual elements. This is advantageous in situations that require the trademark to be highly distinguishable in order to be allowed and granted registration. The drawback is that there are limitations because separately using the problematic element of the combined logo is not protected and may conflict with other businesses or the trademark rights holder.
To have a thorough understanding of the nuances related to trademark registration and to avoid incurring unnecessary costs, it is practical to consult with trademark experts. Remember, the registrability of a trademark varies on a case-by-case basis. Distinctive trademarks will have the maximum protection if registered in the correct manner while problematic trademarks may have some chance for registration if the proper type of trademark is filed and a filing strategy is undertaken before proceeding with the registration process.
Registering a trademark is a time-consuming and complicated process so you may want to hire a trademark professional to handle your trademark registration needs.
Original post from Trademark Registrations Explained: Word vs. Logo Marks – Helium 10
