Acquiring a trademark is an essential step to protecting your brand’s identity, and as such, is a consideration that every business owner should take into account. However, anyone who has looked into the process knows two things to be true: first, it’s expensive. Second, it’s time-consuming.
So, it’s no surprise that one of the most frequent questions I get from entrepreneurs looking to trademark their business is whether or not they should register their business name and logo together on one application.
Let’s weigh the pros and cons.
- You’ll save money. Filing fees (exclusive of attorneys fees) will usually be approximately $300 per application.
- You’ll save time. Registrations will take about 6-12 months.
However, for reasons explained below, you’ll most likely end up having to walk through the process again later on if you register together.
Registering together is going to save you money, and likely, time. However, sometimes choosing the quicker and cheaper option will cost you much more time and money in the future. Here’s why I always suggest that my client file them separately:
In the United States, trademark protection only extends to the trademark registration as it’s submitted to the United States Patent and Trademark Office (USPTO). This is important: this means that the federal protection you acquire from the USPTO only applies to the mark as it’s been registered. So, if you file your name and your logo together, you must actually use them together at all times to maintain your legal protection under federal law. If you file them together but don’t always use them together, that federal protection you applied for won’t apply- registering them together means that any time you’re using your business name, you must present your logo as well. Having to remember to use them together, always, is going to be nothing short of complicated and burdensome for both yourself and your team.
If, on the other hand, you register them both separately, you will be able to use them separately without losing that federal protection.
Aside from the limitations of how you could use your name and logo, it’s important to take into account another scenario: rebranding. While of course it’s possible, chances are, your business name won’t change much as your business grows. However, the odds of your logo evolving over time are significant; especially as you add new or different goods or services to your offerings.
If you registered your name and logo together, any sort of rebrand of either your name or logo would require a new registration. For example, if your name remained the same, but you changed out your brand colors, or the logo itself, you would have to file an entirely new registration. And because the registration process can take anywhere from 6-12 months, this can significantly delay your rebranding process.
The third consideration? Protecting yourself from infringers: aside from the time and cost considerations that would come with a re-filing, there is an even bigger reason why you should not register your name and logo together: by doing so, you significantly undercut your own ability to protect your brand from infringers.
Keep in mind, your legal protection only extends are far as how it appears on your trademark registration. This means that if you register them together, your direct competition could theoretically use your name or logo, as odd as that sounds. Registering your name and logo together is comparable to ONE trademark in the eyes of the USPTO. Therefore, an infringer would have to use both your name and logo in order to constitute legal infringement. According to the USPTO, you actually don’t own your name or your logo individually.
Let’s use an example. Both the name and logo of Apple are very distinguishable, right? Let’s pretend that Steve Jobs decided to save a little bit of time and money when he registered the Apple trademark and threw them both in together on one application. Let’s then say that after a few years of success, Microsoft took notice, and in an effort to create a little industry confusion, they begin using the Apple logo. If they were to do this, and Steve Jobs only owned the trademark as a combined registration, he wouldn’t have any recourse against this action. Think of how much this scenario would damage the integrity of Apple as a recognizable brand!
It’s an extreme scenario, but it conveys the point. The only reason why a company registers a trademark is to protect their brand identity (contrary to some people’s belief, a trademark does nothing to protect your company from a liability perspective), and by registering your name and logo together, you are pulling the rug out from under your own feet in terms of your ability to protect that brand. You will not be able to sue any infringer if you have not properly registered your trademark on a federal level. Would Steve Jobs ever run this risk? Of course not. And there’s absolutely no reason why you should approach your business any differently than Steve Jobs would.
Hopefully, this article demonstrates why registering your name and logo together is not worth the time or money you think you’re saving at the outset. Registering your trademarks separately is a matter of when not if….and you’re sacrificing your liability protection in the process.