Logo trademarking tips: a legal perspective
Published on August 25th, 2009 Read the 20 comments »
This guest post has been republished and edited with the kind permission of author Steve Baird, Chair Trademark & Brand Management with Winthrop & Weinstine Attorneys, Minneapolis, Minnesota.
Steve has passionately represented clients in trademark and related intellectual property matters for more than 18 years, with clients spanning virtually every industry. Having focused on trademarks and the legal implications of branding and design for nearly two decades, Steve is a frequent speaker and author on trademarks, brand management, and related intellectual property subjects.
Pros and Cons of Stand-Alone Non-Verbal Logos and Other Trademark Styles: A Legal Perspective
This is my effort to identify, from a legal perspective, some of the pros and cons of non-verbal logos and other trademark styles.
But, before addressing the legal implications, it’s worth noting that a number of our insightful readers and commenters have already helped articulate a variety of pros and cons from a business and marketing perspective (view the comments on Duets Blog). By my count, there appears to be consensus on at least two important points:
- Having an iconic stand-alone non-verbal logo or wordless trademark symbol is highly desirable, especially for truly international brands; but
- be prepared to spend a lot of time, effort, and significant resources to achieve one.
In addition, at least one designer has written that having a logo without words “can be a big branding pain” for a variety of reasons. She identifies three basic logo styles:
- Text logos
- symbol logos
- combination logos
Examples of text logos are the Coca-Cola script, the Yahoo! stylized word, the Google stylized word, and the highly stylized eBay logo.
On the other hand, the Shell logo, McDonald’s Golden Arches, and the Nike Swoosh, are all good examples of symbol logos. Here’s a message board collecting a number of other possible candidates for symbol logos, each capable of standing alone — without words — yet still having a lot to say to consumers.
The designer referenced above contends that for a variety of reasons, combination logos often make the most sense. A combination logo “combines both a symbol and the company name. The symbol and text can be integrated together, side by side, or with one located above the other.”
Generally, from a trademark owner and legal perspective, I prefer the combination logo too, but not the “integrated” type, instead the “side by side” or the “one above the other” type. The Mercedes-Benz combination logo shown below nicely illustrates the “one above the other” type of combination logo:
The combination logo is your best bet for trademarking
Generally, this format and style is more flexible, easier to clear for adoption and use, easier to register and protect each element separately, and easier to enforce rights in both verbal and non-verbal elements.
With respect to enhanced flexibility, a trademark owner can elect to always use the verbal and non-verbal elements together, perhaps as a way of reducing the risk of infringing on another’s prior rights in a mark perhaps similar to either the verbal or non-verbal element.
Jack Cuffari of Brand Smacks commented that the combination logo is the “best-case scenario” because it is possible to “wean the symbol away from the name once research has proven that the target audience gets the connection, so that the symbol can be used alone, or in conjunction with the brand name.”
Indeed, few symbol logos spring into existence without a history of having been used side by side with the underlying brand name, so, the symbol adopted by the “Artist Formerly Known as Prince” is probably the best exception to this general rule:
With respect to ease of clearance, it is generally easier to clear physically separable combination logos over text logos or integrated combination logos, since the Mercedes-Benz verbal portion involves a straightforward word search, and the corresponding three-point star within a circle symbol involves a straightforward design search.
In fact, it is often more difficult to obtain a comprehensive and reliable trademark search report for a proposed text logo or an integrated combination logo as compared to a symbol logo or a physically separable combination logo. Because of design coding challenges, it is easier for a trademark searcher to locate prior marks of potential concern when one’s proposed logo comprises a stylized star or shell design than a text logo that may be unknowingly or unintentionally similar, not to the word, but to the color combination and lettering style employed by, say, Coca-Cola, Yahoo!, Google, or eBay:
With respect to ease of registration, if the brand name is physically integrated and part of or even touching the non-verbal design elements, in many cases, the non-verbal design elements cannot be separately registered as a trademark. To register the non-verbal design elements of an integrated combination logo, the applicant must convince the U.S. Trademark Office that the non-verbal design elements actually function as a separate trademark..
This can be difficult to establish if the verbal element is always present within the design. On the other hand, the Trademark Office views a non-integrated combination logo as comprising at least three different marks, each of which may be registered alone:
- The word or words;
- the non-verbal symbol;
- the combination of verbal and non-verbal elements.
By being able to register each element separately at the outset, even during a time when they are always used together, it facilitates the trademark owner’s ability to eventually ”wean the symbol away from the name” with added confidence.
For more information on the importance and benefits of federal registration, see my previous post entitled “The Power of Federal Trademark Registration Remains Strong in Tough Economic Times.”
With respect to ease of enforcement, assuming each element of a physically separable combination logo has been registered, enforcement is enhanced too, for the reasons already stated above. Having each element registered separately, even though they may only be used together, permits the Trademark Office to refuse registration of later marks that are confusingly similar to either the verbal or non-verbal element. In the event that the Trademark Office doesn’t see a conflict for some unexplained reason, the non-integrated combination logo format also enhances the trademark owner’s ability to challenge registration of another’s mark that may not be confusingly similar to the combined elements, but to one of them.
Disclaimer
This blog post (first published unedited here) is provided for educational purposes only. It is not intended to be advertising, and it is not intended to be and should not be relied upon as a source of legal advice. You should not rely upon the content without first seeking the advice of legal counsel. The author of this blog post and his employer, Winthrop & Weinstine, P.A., expressly disclaims all liability in respect to actions taken, or not taken, based upon the content of this blog post.
Visit the Winthrop & Weinstine website
Logo trademark resources
- USPTO: United States Patent and Trademark Office
- USPTO: where to start
- USPTO: is registration of my mark required?
- INTA: International Trademark Association
- Trademark, from Wikipedia
- Patent and Trademark Information, from University Libraries
- Common misconceptions about trademarks, from Interbrand
- Trademarkia, free trademark search online
Do you have any trademarking stories or tips to share?
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Update: 02 April 2012
Here’s a relevant blog post by Jeff Lapatine: Can I use that trademark? Maybe.
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Frosty Toyota symbol by Trynes
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