FREQUENTLY ASKED QUESTIONS Brand Name, Logo, Tagline— What Do You Trademark First?

Your brand name, logo, and tagline are considered valuable assets to your business.


So the question is, which one do you prioritize when filing for your trademark registration?


Learn more on trademarking strategy and the best way to go about protecting your branding assets in this short video:

THINKING OF TRADEMARKING YOU BRAND?

TRANSCRIPT

If you developed several branding assets, such as a brand name, a logo, a tagline—what's the best way to go around protecting all that? I'm Andrei Mincov—and in this video, we'll talk about strategy.

In a perfect world, you have an unlimited budget and every single one of your branding assets is trademarkable. If that's the case, the answer is clear and simple: you want to trademark all your branding assets separately and if you happen to use them in combinations, you want to trademark those combinations as well.

For example, you would trademark your brand names as wordmarks, which is in a way that ignores the font, color, capitalization, and overall look of your names. You would just be protecting the literal element of your brand. There are thousands and thousands of such trademarks out there but just to give you an idea, GOOGLE, TRADEMARK FACTORY, or BMW.

Then you would trademark your logos. There are technically three types of logos. The first type is just the icon, the graphical element that does not contain the actual brand name. A few great examples of the icon logos are the blue [F] of Facebook, the 3-pointed star of Mercedes-Benz, or Nike's swoosh. The second type of logos is a fanciful representation of your brand name. Some great examples would include Canon, Disney, and Сoca-Cola.

And the third type is when you combine an icon and the stylized name into a single mark. For example, the Starbucks Coffee logo, Adidas, or Toyota. For each of your logos, you might even want to file two separate trademarks—one claiming color as a feature of the mark and the other one without it. This way, the trademark that does NOT claim color as a feature would protect the SHAPE of your logo or actually what you say in it. It will allow you to stop others from using similar marks, regardless of your or their colors.

At the same time, the trademark that DOES claim color as a feature would focus on color combinations and would allow you to stop others from using similar colors—even if the actual words or shapes depicted in their logos are less similar. Let's use Target as an example. They have registered two virtually identical trademarks for their logo. One claims color as a feature or their mark, and the other one doesn't.

Their trademark that does NOT claim color as a feature of the mark will allow them to go after anyone whose logo somewhat resembles the bullseye, regardless of the color they might use. For example, Target was able to successfully oppose THIS trademark. As you see, even though it has a different icon and a name that has nothing to do with Target, it was enough for Target to target this other trademark—pun very much intended.

On the other hand, their trademark that DOES claim color as a feature of the mark would allow them to go after even LESS similar marks—as long as they are red. The idea behind this is that for some people, the color is enough to associate a brand with a particular product or service.

When you're done with names and logos, you would then trademark your taglines, each as a separate mark, of course. JUST DO IT®, I'M LOVIN' IT®, and IF IT'S REMARKABLE, IT'S TRADEMARKABLE® are all registered trademarks. And finally, if you often place your branding assets next to one another in a certain pattern, you would trademark those combinations as separate trademarks.

Let me give you a few examples. Here's Target's logo combined with a tagline Expect More, Pay Less. Here's LG's logo that combines the icon, the name, and the tagline, Life's Good. They own the trademarks for the logo, the name, and the tagline separately, but on top of that they trademarked the combination they commonly use.

And here's NIKE's combined logo. Again, Nike owns the trademark for the word Nike, it owns the trademark for the image of the swoosh, and they also own a trademark for the combination of the two. And yes, they own it both with a color claim and without it. As another example, Apple owns separate trademarks for CARPLAY and APPLE CARPLAY. Why? To make sure no one has any silly ideas about diluting their brands.

So that's what you do if you have an unlimited budget and if all your branding elements are trademarkable. But let me tell you something. During my 25-year career in the field of intellectual property, I've done work for the biggest names out there. I've done IP work for Apple, Microsoft, Facebook, Google, J.K. Rowling, Ford, Dreamworks and many-many others. I've yet to meet a client with an unlimited budget.

Trademark attorneys can always come up with more stuff for you to trademark than you are willing to pay for. Once you exhaust all possible combinations of what to trademark, they'll come up with suggestions about additional trademark applications to cover more goods and services or to protect your brand in other jurisdictions.

Not that there's anything wrong with their advice, it's just that there's ALWAYS more stuff you can trademark, doesn't necessarily mean you should do that. Which brings the question, if you DO have a limited budget, how do you priorities the assets you should trademark? Assuming it is trademarkable at all, your first priority should be trademarking your main brand name as a word mark. 

When I say, main brand, I'm referring to either your company name or your umbrella brand name.  For example, Apple owns thousands of trademarks, but their main brand is Apple. If they couldn't trademark the word Apple, they couldn't BE Apple. If they couldn't own Apple, there wouldn't be any sense for them to build their empire using the bitten apple logo. So it all starts with the name. Having said that, sometimes, when the wordmark is not readily available, you may want to go for the stylized name or a combined mark comprised of the stylized name and an icon.

One more reason you may want to go for the combined mark is if you are REALLY tight on the budget. This way, you can start with securing the combined mark. It will not give you the same level of protection as two separate marks would give, but it will give you SOME protection, so that as your business grows you could then file two additional marks to improve on your trademark portfolio.

The next echelon of protection would be to trademark the names of your products and services. To go back to Apple's example, they own a bunch of trademarks that cover the iPhone, iPad, Mac, Mac Book, and so on. In fact, they wouldn't spend a dime promoting a product unless they were certain that they could secure the name. The same goes for services, or names of programs and courses if you are in the education space.

Finally, the next layer will be more situation-specific.  It really boils down to what you want your target market to see and remember the most about your brand. If you expect people to shop at your physical location because they recognize the logo, then you got to trademark the logo. Think of McDonald's signs you see along the highway. 

On the other hand, if you came up with a clever tagline and you see that it is helping you turn curious people into buyers, you owe it to your business to trademark the tagline—before your competitors start using it in THEIR marketing. These are the ground rules, but everyone's situation is different. This really boils down to a combination of what trademarks are registrable and how much money you are prepared to invest in protecting your brand at any given time.

Figuring out the order of what to trademark can be crucial for startups and new entrepreneurs. That's why we have a whole team of strategy advisors here at Trademark Factory® who can help you figure this out. If you are not sure where to start and how to approach this, click the link in the description below and book your free call with one of our advisors.

If nothing else, you'll gain clarity on your options and if you see that there's a fit between your needs and what we offer, we will be happy to help you trademark your brand with a guaranteed result for a guaranteed budget. And for those of you who are watching this video just to learn, here's an exercise for you. Post in the comments what trademarks you think are owned by Honda. And I don't mean that you should do a trademark search or just look up if they have a list of trademarks on their website. Just think about their brand names, logos, and taglines—and post them in the comments below. Let's see who can get the most!

And with that said, I'll see you in the next video!

Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.