Should I file my different trademarks separately?
Let’s say you have three different trademarks to register: your company name, your company logo, and your flagship product name. Since each trademark registration requires a separate application fee, this means you’ll need to pay this fee three times to get your company fully trademarked. This also doesn’t take into account your attorney’s or trademark agent’s legal fees. Sounds like a pain!
So, a trademark attorney that you’ve hired suggests that you combine filings. After all, if your company logo and company name always appear together, why not simply file them together as one trademark to save both time and money?
Do not let this shortcut tempt you. Combining filings like this might seem to make a lot of sense, but the complications that arise will only cost you in the long run.
The “combined” trademark can’t be separated
If you decided to combine filings, and the USPTO approves your registration, then you now own a trademark that can no longer be separated into its composite parts. If you combine your company name and company logo into one trademark, that means you can no longer display the company name by itself, or the company logo by itself, and be protected by trademark law. In short, you own trademark rights to the combined image (because that is how the USPTO approves it), but not to its individual components. That can mean a lot of headaches down the road if you ever plan on evolving or changing your company brand.
It may not be an issue now, but it can turn into one
Companies regularly change logos. It’s a sign to the public that the company is evolving, changing, and progressing with consumer needs. More so, design motifs and style often change over time, as well. Who knows if your logo is going to look antiquated and backward in ten years’ time?
So, after a few successful years, you think to update your company logo. You decide that having the product name visible along with the logo is no longer important (perhaps your company logo has grown ubiquitous!). But stop—you don’t actually own the trademark to your product logo. You own the trademark to the combined image of product name and logo, but because you filed them together, they cannot be separated and viewed while still retaining trademark status; that’s not the way trademark registration works, unfortunately.
What you would need to do: file one trademark to protect your product name, and then file yet another for the updated logo (since there is no trademark on the logo itself!). You combined filings to make things easier, not more difficult!
A real-world example: Many companies incorporate their names into the design of the logos themselves, like PepsiCo. Do you think that PepsiCo only registered the Pepsi logo as it appears on their soda cans? Of course not. PepsiCo owns the rights to all iterations of the Pepsi logo, as well as the word “Pepsi” itself and the phrase “Pepsi Cola”. If they had decided to file the “Pepsi” name and Pepsi logo as one unique trademark, their ability to police the use of these iterations (in both name and logo) would be greatly limited.
In short, combining trademark applications might save money in the short-term, and it might even get around any problems that your separate trademarks (company name or trademark logo) are facing to get approved.
However, combining these elements together binds you over time—you are now limited in how you can use your logo and company or product name, and you’ll need to refile for a new trademark registration if you ever decide to change something like your company logo. Don’t get strung up by these issues that can be avoided from the very start!
However, you might be encouraged to combine trademark filings if the following is true:
- One of your trademarks can’t be registered by itself due to competing trademarks, or
- Your trademark is descriptive and thus cannot be registered by itself
If these exceptions don’t apply to you, then save the stress of trademarking complications by ensuring you file your trademarks separately!
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