FAQs Categories: Europe

Which trademark should I File? Word Mark or Logo?

When deciding whether to file for either a word mark or logo, it is important to keep in mind that a logo must always be used as it is depicted in your application. In addition, if you file your logo in a particular color in the US, you must always use your logo in that particular color.

On the other hand, word marks are somewhat more flexible. When filed in all capital letters, word marks allow the trademark owner to display it in any combination of lower case and upper case letters.

For example, if you filed for the word mark TRADEMARK ANGEL ROCKS, you can use it on your goods and/or services as: trademark angel rocks, Trademark Angel Rocks, or TraDeMaRk AnGeL RoCkS.

The flexibility of a word mark ultimately makes it quite appealing as it is not limited to a particular font or color and can be displayed in a combination of upper and lower-case letters.

However, filing for a logo can be more advantageous in some situations.

For example, if your mark is found to be descriptive of your goods/services or uses generic words, your mark will generally be limited to the Supplemental Register. A distinct logo, however, can “carry” the mark to the Principal Register despite the descriptive nature of your mark.

Let’s say you want to file for TRADEMARK REGISTRATION CO. for a company that offers trademark registration services. That’s a mark that is descriptive of the services offered, and will therefore would be limited to registration to the Supplemental Register. If this same mark was filed with a distinctive logo, for example:

trademark-registration-logo

 

Then, the logo could provide sufficient distinctiveness to allow registration of TRADEMARK REGISTRATION CO. onto the Principal Register (with a disclaimer for “TRADEMARK REGISTRATION CO.”).

Another situation when filing for a logo is advantageous is when there are similar marks. For example, a client wanted to register the mark HAWQUE with a design element of a flying hawk chinese-trademark–  for computer software connecting customers to security contractors, in Class 9. We advised that the logo will most likely be registrable but the wordmark alone would be too similar to marks containing the word HAWK providing similar products in the same class. Although we received an office action alleging that the HAWQUE logo mark was confusingly similar to a registered wordmark, HAWQ, that also covered Class 9 computer software, we were ultimately able to overcome the objection. Our client’s logo, HAWQUE, was successfully registered soon after.

In another case, a client wanted to register the mark ESTEEM APPAREL, either the word mark or the logo. However, in our initial search, we found a very similar, registered mark, ESTEEM CLOTHING. In this case, we advised that the logo would have a greater chance of registration. The client chose to file for the logo register-a-trademark-in-australiainstead of the word mark and, although we received a confusion objection based on similarity with ESTEAM and ESTEEM CLOTHING marks, we were able to successfully able to overcome the objection and the mark was successfully registered.

Since the client protected the logo register-a-trademark-in-australia, he now cannot use Esteem Apparel side by side, without the image, in a different font or in ALL CAPITAL letters: ESTEEM APPAREL. On the other hand, if word mark had been filed – ESTEEM APPAREL, he could have used it in ALL CAPITAL LETTERS, in any font, side by side or one word above the other. Logo makes the trademark inflexible and you should not be making even small changes in your use.

In addition, in some cases, one has to file for a logo if the trademark is broken/separated by images or symbols. Please check our article that talks more about it.

Thus, as can be seen from the above examples, it is important to first determine if your mark is too descriptive to achieve registration in the Principal Register, and whether you intend to consistently display your logo on all of your products, prior to making a decision regarding whether to file for a word mark or a logo. Also, in case there are similar marks, filing for the logo may help to differentiate and ultimately achieve registration of your mark.

What are considered absolute grounds for trademark refusal?

Some trademarks cannot be registered on absolute grounds. It’s important that your trademark does not fall in any of the categories below in order to be registrable:

  • your trademark does not function as a trademark, i.e. as a source indicator
  • your trademark clearly descriptive of goods or services
  • your trademark is generic and is merely the name of a product or service
  • your trademark is not distinctive, i.e. is not capable of distinguishing your products or services from products or services of other traders

Make sure you watch our video how to select a great trademark.

 

What are different types of names? Company name vs business name vs domain name vs trademark?

What is the difference between company name, business name, domain name and brand or trademark?

What are different types of company, domain, business or brand names? Let’s get the names straight to avoid confusion.

  • Company name: Legal name of the company, either registered federally or in a certain state (or province in Canada).

Example: Microsoft Corporation
Note: one company may own more than one brand and may do business under more than one name

  • Business name or doing business as: Name under which you conduct your business.

Example: Microsoft

Example: Skype

  • Domain name: Name of your address on the Web.

Example: www.microsoft.com

Example: www.skype.com (Microsoft owns Skype)

  • Trademark: A trademark may be one word, a combination of words, or logos (or even sounds and smells!) used to distinguish/differentiate your products or services from those of other entities.

Example: MICROSOFT, , or a combined mark:

Example: SKYPE,

Let’s take another example of a giant retailer Kraft Foods.

Company name: Kraft Foods Inc.

12 of Kraft Foods brands are sold worldwide: Cadbury, Jacobs, Kraft, Maxwell House,  Milka, Nabisco, Oreo, Oscar Mayer, Philadelphia, Trident and Tang.

For each brand Kraft Foods has a website: cadbury.co.uk; cadbury.com.au; oreo.com; oscarmayer.com, etc.

Not everyone knows that these 12 famous brands are owned by the same giant! It doesn’t really matter, what matters is that everyone knows where do buy their favorite Cadbury chocolate or Oreo cookies and everyone knows how the Oreo cookies package looks like!

Do I need to register a trademark if my business incorporated?

If you simply business incorporate or register a corporate name, it doesn’t mean that the government approved for you to use the name as a trademark.

If we take a US LLC, as an example, every state has its own laws about business names.

You can register your LLC name in Delaware but the business name registration has no impact on the other 49 states.

In plain English, if you register Coolapples LLC in Delaware, another entity may register Coolapples LLC in Indiana. If you plan to expand nationwide or worldwide, trademark registration will provide that protection. A federal US trademark will give you exclusive rights to use your brand name for your products across the US. Likewise, a Canadian or Australian trademark will give you country-wide rights to use your chosen brand in your country and will make it easier for your to sell or license your trademark later.

What is the difference between a UK and EU trademark?

A UK trademark only protects you in the UK, which consists of England, Scotland, Wales and Northern Ireland. There is no protection outside of the UK. A UK trademark is filed in the UK Intellectual Property Office (UKIPO).

A trademark filed in the EU Intellectual Property Office (EUIPO) is called an EU trademark (formerly known as a CTM (Community) trademark).

EU trademark protects you in the 28-member countries of the EU making it a very strong trademark.  Current EU countries are: Austria, Belgium, Bulgaria, Croatia, Republic of Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the UK.

Why is it important to monitor newly filed trademarks in the EU and the UK?

Trademarks Office in the EU  and the UK will not refuse your trademark if there is a prior filed or previously registered similar trademark.

Instead the Trademarks Office in the EU and the UK only looks at absolute grounds (i.e. if the mark is deception or descriptive, it may be refused).

However, if there is a similar trademark, it will not be refused by the Trademarks Office. Instead, owners of similar trademarks may oppose during the 3-month opposition window in the EU and during the 2 month opposition period in the UK.

One of the main reasons one may file an opposition is confusion with an earlier trademark. Opposition proceedings offer an owner of an earlier trademark the right to oppose the registration of a trademark that could endanger his/her business.

By monitoring the EU Intellectual Property Office database or the UK Intellectual Property Database, you will ensure that you will timely see newly filed EU / UK trademarks and will be in a position to oppose in time. Ask us about the monitoring service.

What is a cooling off period in a trademark opposition?

In the European Union, cooling off period is set by the Trademarks Office once the opposition has been received and assuming it is admissible.

The purpose of the cooling off period is to allow parties to negotiation a settlement agreement.

An initial cooling off period is 2 months, but can be requested to a maximum of 24 months.

When the cooling-off period has expired and if no agreement has been reached by the parties, the litigation part of the proceedings begins. Most oppositions are settled as it’s cheaper than to proceed with a full-blown opposition.

Do I have to use my trademark in the European Union prior to filing? Do I have to use my trademark after registration?

In the EU, no use is required in order to file an application. Just like in the UK, you don’t need to specify any dates of first use or to indicate if the mark is in use. No use is required to obtain a trademark registration.

To maintain your trademark, it must be put to “genuine use in the European Community” within 5 years of registration. If the trademark has not been used, without a very good reason, for five years or more, then the registration may be cancelled. Furthermore, Community trademarks that do not meet the new standard for “genuine use in the Community” may be converted to national trademarks of a Member State if they meet the requirements for that Member State.