Now, what does a logo mean? Think of Apple’s logo, which is a picture of an Apple with a bite taken out. It’s not a new way of writing or a different script for example, if you think of the word McDonalds, they’ve got it written in a particular script. That’s not what I’m talking about when I talk about a logo, I’m actually talking about an image which could be the golden arches for example, or the Apple image. So if you have a logo for your business should you protect it by trademark?
In an ideal universe, the answer is yes because trademark registration is great protection. However, in the real world where we have limited budgets, usually if you have a trademark which is a word, the name of your business or the name of your brand and the logo, most often I recommend to my clients only to file an application for the word trademark. So if I was acting for Apple, was there the word Apple and the image of an Apple which is the logo, I would recommend that they file for the word only.
The reason for that is that if I file for the combination it actually dilutes the value of the trademark. Because if somebody is infringing, they have to infringe the totality of the trademark, so the word and the image. If somebody else came along and used the word Apple and an image of a banana, there would be an argument surrounding whether they infringed Apple’s word, plus their logo.
So the way to have the strongest trademark is to get the word registered. Sometimes you can’t because it’s too descriptive of what you’re doing, and if it is too descriptive you might want to think about changing your brand to something more distinctive. Apple for computers is an example of a distinctive trademark. Descriptive words are very difficult to get registered and they are also the ones that people tend to infringe the most, because other people want to use similar descriptive words.
You can sometimes get a descriptive word, registered by adding a logo. Remember that I’m not talking about a different font. I’m talking about an image, some kind of graphic, some kind of picture that might help, but it has to be something more than just a simple geographic line or shape which won’t be considered to be distinctive enough. If somebody creates a logo for you, you need to make sure that you own the copyright in the logo. Because what often happens is a designer designs a logo but they actually retain the copyright, which means they have the right to say whether or not you can register it as a trademark. They sometimes also have the right to say whether or not you can modify the logo.
I worked for a big government department, which paid tens of thousands of dollars to get a logo created for them. Then they wanted to modernize it, so they wanted to round off the edges and wanted to change it, so just as a matter of common courtesy they asked the designer if they could do that. The designer then said, “No, you may not modify my logo, and you may not register it as a trademark unless you pay me double.” So the government department got rid of that designer and got a new logo created from scratch, but it can happen.
Even if it’s your friend or someone that you know has created a logo for you, make sure to still get it in writing that you own the copyright in the logo, It can be as simple as an email. If you use one of those agencies like Fiverr or Upwork, understand that there is a risk that sometimes people on those sites will say, “Yes, you own the copyrights.” Meanwhile, you don’t own the copyright because they’ve taken it from somewhere else. I actually tested this on Fiverr, so I asked somebody to create me a logo and then I did a Google search of the logo, and guess what? It belonged to an international company, the exact same thing.
The person on Fiverr had just copied it and sent it to me, as though they had created it themselves. If your budget does extend to doing more than one trademark registration, then go for the word on its own and the logo on its own. Unless your words are a bit descriptive then you might have to do the combination to get that registration through. My name is Cathryn Warburton, and I am the Legal Lioness.
