How to Trademark a Logo
A company logo may be the perfect way to establish a memorable brand identity. Designing the right logo for your brand can take months, and many companies invest significant capital in outsourcing this task to graphic designers and marketing specialists. But falling in love with a design is only the first step on the road to successfully trademarking and protecting a logo.
Before committing to a logo, you should ensure that your desired design hasn’t already been scooped up by an existing trademark owner. You could land yourself in legal hot water if you begin using a protected design, whether you were aware of the infringement or not.
Registering your logo with the United States Patent and Trademark Office (USPTO) will help protect you against infringing parties intent on exploiting your unique brand identity and design. The process takes approximately nine to twelve months and requires you to submit an application, along with an application fee. The USPTO recommends that you have a trademark attorney handle this process for you, as mistakes in the application can result in delays to your registration or outright refusal.
What is a Trademark Logo?
A trademark logo is a logo that is used to identify and distinguish the source of goods or services. Famous trademark logos include the bullseye for Target and the Starbucks’ mermaids. As soon as a consumer views these logos, they are able to recognize the brand behind the products.
The owner of the trademark is typically the company owner, as opposed to the designer of the logo. There are many benefits to registering your logo with the USPTO.
- Priority of Use: Trademarking your logo gives you the sole rights to use the logo in conjunction with your company’s goods or services.
- Ability to Use the Registered Trademark Symbol: Once you have successfully registered with the USPTO, you can use the registered trademark symbol (®) which alerts others to your trademark rights. Unregistered logos that are being claimed as a trademark will use the unregistered trademark symbol (™).
- An Enhanced ability to pursue legal action against an infringing party: Having a registered logo provides presumptions in litigation that can save significant time and money. At times in infringement cases, simply having your trademark registered is enough to win the case. Without federal registration, you have an uphill battle in preventing other parties from using your logo.
- Basis for foreign registration: If you federally register your logo with the USPTO, you’ll have a streamlined ability to register your trademark in other countries.
Keep in mind that not every logo is eligible to be trademarked. Your logo must be unique enough to qualify for registration. In other words, you wouldn’t be able to simply trademark a horse as a logo for apparel since it is already taken. Before starting down the path to registration, ensure that you are not wasting time and money on a logo that is too generic or similar to an existing logo.
Unregistered Logos
Unregistered logos are still offered some degree of protection under common law trademark rights. You may choose not to register your trademark logo if you are only operating a local business. In that case, common law trademark rights would prevent somebody else from using the logo in the same region.
Still, it’s important to note that using an unregistered trademark is risky. Another business may be well within their rights to use the logo as they please outside of your geographic area, which could result in damage to your company’s reputation and profits. Additionally, you may be limited from expanding your brand’s presence to other areas and markets.
You might choose to register your trademark logo with the Secretary of State in whichever state you are using the logo in. Doing so only protects your rights in that state, and there is nothing to stop other companies from using your logo in other parts of the country. This can be particularly detrimental when promoting your brand on social media.
Still, it might make sense to hold off on registration if you think you might change your logo down the line.
Step 1: Conduct a Trademark Logo Search
Even if you plan on leaving your logo unregistered, you should make sure to run a search of the design to ensure you aren’t infringing on an existing trademark. You can search for all registered trademark logos using the USPTO’s Trademark Electronic Search System (TESS).
Because you are searching for images rather than words or phrases, the process of searching is a little more complicated. You’ll first need to consult the USPTO’s Design Search Code Manual. The USPTO assigns a numerical search code to every design element in a trademark logo. If, for example, your logo was a monkey wearing a baseball cap, there would be a design code for the monkey and a design code for the baseball cap. You can search the codes separately, or filter the searches to include both features.
Registered trademark logos don’t necessarily have to be identical to your own in order to be deemed confusingly similar to an existing trademark logo. Make sure that your trademark is distinct enough that customers wouldn’t mix up your logo with another company’s design. Depending on the complexity of your desired design, performing a thorough trademark logo search can be a daunting task. Many companies opt to have a trademark attorney handle the search process, to ensure they don’t miss any red flags.
Failing to conduct a search beforehand could result in your company being sued for using an existing logo. Outside of the legal repercussions of infringement, you would also need to cover the cost of reprinting advertising materials or redesigning a website with a new logo. The safest course of action is to make sure your logo is up for grabs before using it.
Step 2: Submit an Application
Once you are certain that your logo doesn’t infringe with an existing trademark, you can submit an application with the USPTO. A trademark logo must be in use in order to qualify for registration. Your trademark application will cost between $225 and $275 in government filing fees depending whether you use canned descriptions or insist on using your own.
You should have a trademark attorney prepare the application for federal registration of a logo. This is because the logo in question needs to be described in specific terms used by the USPTO. The USPTO attempts to assign design search codes to every element of your design they deem significant. These are the features that stand out and would be used to describe the trademark logo, or distinguish the logo from another trademark. Listing the incorrect information could result in your application being automatically rejected, and the application fees are non refundable.
After the application has been submitted and the USPTO has assigned any relevant design codes to your logo, an examining attorney will process your application. It can take approximately four months for an application to be viewed by an examining attorney.
Step 3: Respond to Any Actions or Oppositions
The examining attorney will alert you if there is a problem with your application or a conflict with an existing trademark. Typically, you have six months to respond to an office action, but you should strive to respond as quickly as possible. You might be able to provide simple clarification via phone to the examining attorney. In other cases, you might have to rethink your logo completely. If an existing registered trademark is preventing you from federal registration, you should reconsider the importance of the logo to your business. You may be able to overcome the prior cited registration, but you would need to prove that you were using the logo before the other party. Talk to a trademark attorney about your options.
Once an examining attorney has approved an application, it is published for opposition. This gives other trademark owners a 30 day window to contest your registration if they believe your logo infringes on their trademark. The USPTO publishes approved applications in the Trademark Official Gazette (TMOG) every Tuesday. If nobody comes forward with an opposition of your trademark, your logo will likely be successfully registered.
When somebody files an opposition, the applicant is alerted immediately to the issue. At this time, you might realize that you are indeed infringing on another person’s protected trademark. In that case, you will want to either change your logo, or talk to a trademark attorney about your options.
Step 4: Monitor Your Logo
Once your logo has been successfully registered, it is your responsibility to monitor its usage and act swiftly against any infringement. Many businesses choose to outsource this task to a legal service or trademark attorney, as it can be challenging to monitor usage of a logo, and will require a good deal of time and resources. Checking the Official Gazette regularly for new filings is a proactive step you can take to ensure nobody is attempting to register a logo similar to your own. You can also set up a Google Alert, which is a free and simple to use tool you can use to monitor your brand.
Once you have become aware of an infringement, you should avoid informal communication with the infringing party. Instead, your best option is to have a trademark lawyer send a cease and desist letter. A cease and desist letter informs the infringing party of your trademark rights and warns that further legal action will be taken if the unauthorized usage of your trademark does not cease. A cease and desist letter can also demand monetary compensation if you believe the infringing party has profited unfairly from the unauthorized usage of your logo. The infringing party may refuse to comply with your demands, in which case your best bet might be trademark litigation. Cease and desist letters are less likely to be ignored if sent by a trademark attorney, rather than the company owner or a lawyer who does not litigate trademark infringement cases.
A good logo that invokes an automatic response in your consumer will strengthen your brand identity. If you are as passionate about protecting your logo as you are about designing it, you’re less likely to be the subject of infringement.