Trademark registration: name or logo?

In a previous blog I explained why it’s not possible to register a name and a logo in one single application. To register both your name and logo, you need to apply for two trademark registrations. In this blog, I will further elaborate on the differences between names and logos.

Word mark 

As explained in my previous blog, names (or: word marks) are in principle stronger. A word mark covers the word or name, regardless of how it’s portrayed. A logo (or: figurative mark) covers the logo in its entirety. Take word mark CALVE for peanut butter, for example. This word mark covers the word CALVE, regardless of how this word is portrayed. If someone decides to incorporate this word into a logo, there will be 2 logos with the same identical word elements (CALVE). This would make it far much easier for the holder of the word mark to act against the logo than if they would only have registered their logo. Do keep in mind however: it’s always recommendable to also register your logo, and this also gives you the best coverage.  

Descriptive

Thus, in many cases it will be wiser to choose for registration of the word mark. However, sometimes you don’t have the luxury of a choice, because sometimes your word or name of choice will not be suitable for registration. After all, to register a trademark, the trademark should be distinctive and not descriptive. If you apply for a descriptive/non distinctive trademark, the official trademark office will refuse the mark, and you will not get a refund of the application fees. As you know, in many cases the scope of protection of word marks is in general stronger than that of logos. However, a word mark will also sooner be descriptive/non distinctive. This is because a logo is checked in its entirety (visual elements and word elements) to determine if it’s descriptive/non distinctive. Read more about distinctive character in this article

Logo as an alternative

Sometimes, when a word mark is descriptive/non distinctive, going for registration of the logo can be a good alternative. However, keep in mind that this is not a way to get a disguised word mark registration. A logo registration namely is a registration of the logo as a whole. Nevertheless, registration of your logo can be very wise because then you will in any case have a registered trademark.

Need inspiration in coming up with a good trademark? Do read my blogs on what a good trademark is and on successful trademarks that are acronyms [both articles in Dutch].

Not sure is you should register your trademark? Do read this, this and this article [all three articles Dutch] to find out what can happen if you don’t register your trademark!

Leave a Reply

Your email address will not be published. Required fields are marked *