We are often asked the question: should I ‘trade mark’ my brand name as a word or logo, and which is better? In very broad terms a word trade mark is better. However, this article gives you the full answer which is somewhat more nuanced and fact specific.
What is the issue?
Most businesses trade under a (hopefully) unique name consisting of one or more words, for example WARD, and many will have also commissioned a graphic designer to produce a logo as part of an overall brand look.
The logo may incorporate words, letters or numbers, or it may be a stand-alone design, for example the Nike ‘swoosh’ logo.
A follow up question we are often asked is:
If I register the word will the logo be covered too, or if I register the logo will the word also be covered?
In short, no, you cannot fully cover all elements with one blanket registration without compromising your rights in a significant way.
Advantages of registering the word as a trade mark
Firstly it is not a binary choice – most businesses will register both if they can afford it.
But aside from cost, the decision whether or not to do both is depends on the exact logo and words in question.
If budget is tight then we generally recommend starting with the word (or words) element of your brand. Our own trade names WARD and WARD TRADE MARKS were our first choices to register for our field.
Registering the word gives you the most bang for your buck because you get the broadest monopoly rights, which if the application is done properly will cover all fonts, styles and colours.
Further, if you have registered the word a new application is not needed when you rebrand. Rebranding updates often mean that your logo, font, style, and/ or colouring may be changed and any logos that are registered are no longer in step with the brand look that you are using now.
Disadvantages of registering the word as a trade mark
A word (or words) alone may be harder to register because it may be refused by the Examiner at the UK Intellectual Property Office.
If your trade mark is too generic, descriptive or it lacks distinctiveness in relation to your business area, your word mark application will be refused.
A further risk is that a word mark may propel your application into a conflict with another trade mark owner that owns the registration of a similar word(s) in a business field similar to you.
The same application in logo form may reduce that risk depending on the exact circumstances.
Before we apply for your trade mark we can assess these aspects for you and guide you on your choice.
Advantages of registering your logo
If you have a unique and distinctive logo design you will no doubt place a high value on it and you would be very upset if someone else was to use it, or something like it as their trade mark.
Through your marketing efforts you may find that your logo is easily recognisable to your customers who, if they see it on its own know that it is yours. If that is the case already, or it is your aim, then you must register it to fully protect it.
An unscrupulous business may see your logo and want to use it. They may think that it is enough to make a small modification, or to use it in conjunction with different words.
So unless you have your logo registered too you will have more difficulty preventing this unauthorised use. The registration will allow you to take action for trade mark infringement, which is comparatively easy when compared to taking action for copyright infringement or passing off if your logo is unregistered. The latter options are much harder and more expensive.
While on the subject of copyright you will need to ensure that you own the copyright in your logo before you register it. If your graphic designer owns the copyright you should ask him or her to assign it over to you. This is a straightforward task that we can help you with.
Disadvantages of registering your logo
Some logos cannot be registered because they are descriptive in relation to the associated goods. For example you will not be allowed to register a logo of an obvious or generic representation of a cow in relation to dairy products.
Also, logos that are very simple and commonplace shapes with, say, just one colour may not be worth registering because they are unlikely to function well as a trade mark. This means that a consumer would be unlikely to build up a level of recognition with such a logo to associate it with any one brand.
If the word(s) element of your brand is registrable and your budget is tight register the word mark.
However if budget allows, then separately register your logos too. It is tempting to think that if you register just the combination you get the best of both worlds. However, for the reasons explained earlier this is likely to mean that your protection and footprint of rights is compromised.
If you need any help with choosing what to register, or any other part of your brand protection then please call us on 01284 619000 or Click Here To Make An Online Enquiry and we will be glad to help you. Alternatively email us at: firstname.lastname@example.org.