Should you register a trademark for your logo or brand name first?

It’s a question IP lawyers get with some regularity, and it’s worth addressing. There are two broad categories of trademarks: word marks and logos (“design mark” in lawyer-speak). (We’re going to ignore trade dress protection in this post.)

When you’re launching a business or starting down the path to developing a brand or sub brand, you may be constrained by a budget. It is not uncommon for startups to have both a word mark and a logo in mind, but the budget to register both may not be there, yet.

In general, file the word mark first.

And here’s why. Companies tend to keep brand names much longer without changes than they keep logos without changes. Using a word mark without applying to register it can give rise to several risks, including a risk that some other business may begin to use the same branding in another region of the country before you apply to register your trademark—and they may do so unintentionally. This can result in restricted rights and can prevent your company from using its brand name in the regions where that use occurred.

Word marks also provide broad protection. With a registered word mark, you can use any kind of font, typesetting, sizing, etc. You can stylize the wording any way you like as long as you are using the same wording that appears in your trademark application.

Logos, on the other hand, are more likely than word marks to be distinctive from other logos that are registered or in use, so the scope of impermissible similarity in competing marks may be narrower. In some situations, for example, if you purchase a logo from a graphic artist without also ensuring you own the copyright to the work, you could see your logo pop up in use somewhere else by some other entity. This can happen if, for example, the graphic artist sells the same logo to another client. If you use a graphic artist to develop your logo, talk to a lawyer about whether you also need to own the copyright and what other steps you can take to protect yourself.

Everyone’s circumstances may be different, and what may be right “in general” might not be right for you.

As always, if you have any questions don’t hesitate to reach out.