If you have both a name and a logo for your business, but only enough budget to register one trademark, which should you go for?
How do I know which is more important to register first?
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Ideally, you want to trademark them both as two separate trademarks because each would protect different elements of your brand. One would protect the literal part of it, the name, and the other would protect the graphic representation of that name.
Usually, we get this question when the client does not have the budget to file two separate trademarks. So here are the considerations for you to decide whether you want to file for the name or the logo.
First of all, the question is what kind of logo is this? Is this just the image, the icon, or is it the icon plus the name, or it is just a name in a fancy font? That's important because if the icon does not contain the name at all, then in 99% of the cases, you want to go with protecting the name, because that's more important. Icons change, logos change, the names usually stay the same.
If the logo contains both the icon and the name, that's called a combined mark. If you only have the budget for one, that's usually what you want to file for, the combination of the image and the name.
If what you have is just the name in some fancy font, usually you'd want to file for the name again because that name would be protected in any font and it will allow you to protect the stylized version and the name itself—whether it's in Arial font, or Times New Roman font, or whatever fancy font you came up with.
Now, the only time you elect to do a logo and not the name would be if the registration of the name itself is problematic. So you would use the logo as that added element that would make your brand distinctive, or different, from whatever else has been filed or registered before. So you would have an extra argument that looks, we are not trying to get a monopoly on the name, we understand that there might be some confusion there, that's why we have a slightly different name but most importantly we have this graphic element that makes this brand trademarkable.
So again, if both are perfectly registrable, usually the name is more important than the logo. If the name is not trademarkable or problematic, then you will probably go with the logo. And if you have a very distinctive name and a very distinctive logo but you only have the money to go for one trademark, and our payment plans don't help you, and you really can't afford to do two separate trademarks, at that point in time you may want to vote to get the combination. Build the business stronger and then still file two separate trademarks after that. In this case, you'll end up owning three brands—one would be the combination, the other one would be the word mark, and the third one would be the logo.
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.