How to do it Cost-Effectively?
You now have a strong mark called “Trasomark”, which is a (Plain) Word Mark.
To turn it in style, you ask a designer to help you create a logo like “our logo” (isn’t it cool?), or what we called a Logo Mark. However, sometimes we are made to wait for the logo designs for weeks if not months! So here we would like to take some time to discuss the following questions, which are somewhat intertwined: –
(i) Do we need to register for both the Word Mark and the Logo Mark?
(ii) Do we really need to wait for the Logo Mark for trademark registrations?
(iii) How should we protect our valuable trademark in a cost-effective manner?
Before anything, please first make sure that the copyright of the Logo Mark belongs to you (not the designer).
Huh, isn’t it a stupid question? I got what I paid, so the copyright of the designed Logo Mark should belong to me. Regrettably, in the absence of any express agreement, this is likely not the case. Please visit The Copyrights Subsisted in Your Trade Mark.
Back to the Questions, we are afraid that the answers are not straightforward, it is both a question of laws (varied among different jurisdictions) and your commercial objectives. The beginning point is always that the more trademark applications you file, the better trademark protection you can achieve. This is unarguably true in terms of laws in many jurisdictions.
Remember to Look into the Following Practical Concerns
Sometimes it is far too easy for advisors to recommend that you register both the Word Mark and Logo Mark, as we are simply not the one who pays the bill! From our experience, to file trademarks smartly, you may want to take the following commercial factors into consideration: –
1. Do you have any special urge to secure trademark registration as soon as possible?
There is always a risk for not securing trademark registration timely enough, but such a risk is higher for some than others. Imagine you are selling “White” branded cookies, and “White” branded dental services. Obviously, the risk is higher for the former. Consider also if you want to create an online shopping platform called “White”, where whopping marketing and advertising fees will be spent at the initial stages. In urgent circumstances, don’t wait for the Logo Mark but apply for the Word Mark first.
2. Whether you are very fond of the Word Mark?
Sometimes, the Word Mark may mean a lot to you. It may well be because your wife’s and your own surname are nicely bundled into your trademark, or that you have thought of a very playful and meaningful trade name, which any rebranding cause you hardship. By way of contrast, you are not really content with another trade name, which is readily replaceable anyway. In the former situation, it will only be sensible to apply for Word Mark first without awaiting the design of the Logo Mark at the very beginning to reduce risk.
3. Are you in the habit of rebranding your brands from time to time?
If you are very satisfied with the designing features of the Logo Mark, like our smart and sharp “Trasomark” Logo above, of course, you should apply for the Logo Mark, as you can never achieve sufficient trademark protection against the designing features of the Logo Mark by the Word Mark registration.
Considering another different example. You asked your sister to help you rush a logo design for the brand opening (“Logo Mark A”). After the event, you then engage a professional designer to design another Logo Mark (“Logo Mark B”), which looks so differently from Logo Mark A. You then keep using Logo Mark B for your business.
Here, a tricky issue is involved, namely, what constitutes the use of a registered trademark. i.e., whether the use of Logo Mark B constitutes evidence of the use of Logo Mark A / Word Mark. Since Logo Mark B looks very differently from Logo Mark A, the use of Logo Mark B will be less likely to (subject to local laws and actual scenario) be considered as evidence of use of the Logo Mark A registration. Contrastingly, when you secure registration for a Word Mark, although the laws will not protect the designing feature of Logo Mark B, probably the use of the Logo Mark B will still be regarded as evidence of use of the Word Mark. As such, you may postpone the decision of applying also for Logo Mark B until you are fully happy with Logo Mark B and securing registration of the Word Mark is preferred in this scenario.
Trade Mark filings are servants to your commercial needs. Please always share your commercial considerations with your trademark agents as early as possible so that they can help you make a better-informed decision.
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