The Crucial Reason To File Trademarks Separately
Each trademark you file incurs a separate application fee. For example, if you wish to trademark your business name, your logo, and a product name, you will pay the application fee three times. Additionally, you might be subject to greater legal fees if you’ve chosen to work with an attorney on top of the filing fee with the trademark office.
At this point it might make sense to combine filings. If you display your company name along with your logo, wouldn’t filing them together save you time and money? After all, you’d then only have to file two applications and therefore pay only two fees, rather than three.
Do not let this shortcut tempt you. If a trademark attorney suggest you do this, walk away immediately – they’re giving terrible legal advice.
Combining applications for trademark registration might appear attractive, but it will only harm your ability to protect your intellectual property in the long run.
Each application covers one aspect
Let’s say you did take this horrible advice and filed your name and logo as one application. The USPTO has approved your application, so congratulations. You now own the trademark–to your combined name and logo.
Don’t think you can separate these two elements. Because you filed them in the same application, the USPTO sees just one trademark. You don’t own the federal trademark rights to the name by itself, or the logo by itself. You only own the trademark rights to the name and logo displayed together as a single unit.
This might work well enough for you if you always use your name in conjunction with your logo. If another company tried to register your name as a trademark, you might have a case to object. But one thing is for certain:
You will never have the same rights as if you filed the federal trademark for the name and logo separately.
You are filing trademark applications to protect your rights. Why would you take a step that blatantly reduces those exclusive rights for your small business?
When joint applications become problems
Companies change logos all the time. Design changes and evolves over time, so you will almost certainly wish to update your logo at some point. What happens if your new logo doesn’t include the brand name? You can force it in there, but that’s not always possible. If not – where does that leave your trademark protection prospects?
At that point you must file both applications. That money saved now becomes moot. So was cutting a few hundred dollars in expenses during trademark filing worth your while, if you had to spend that money down the road anyway?
There will come a point when you have to file separately for your name and logo during the application process with thee U.S. patent and trademark office. Why open your company to possible attacks on your trademark when you can secure it right from the start?
Real world applications
The linked article about changing logos features many famous brands. You might notice that many of these brands include their names in the logo, the most famous of which is Pepsi. Do you think Pepsi only registered their logo, since it included the brand name in it?
Of course not.
If they had, they would only own the rights to Pepsi Cola, or just Pepsi, in the displayed form. In other words, in 1940 they would have owned only the trademark to Pepsi Cola when written in that calligraphic font.
PepsiCo owns trademarks on all those logos in addition to a trademark on the word Pepsi (and the phrase Pepsi Cola). Failure to register the name and logo separately would limit their rights to police the use of both the name and the logo.
Be smart: file all trademarks separately at the start. (We’ve got a full guide on how to trademark a logo as well.)
Protecting Your Marks