On occasion, after designing a logo, I have people ask if they need to trademark it, and if I can do it for them. You'd think a simple question would have a simple answer, but there's a little more to it than that...
What is a trademark?
To define a trademark, let's go straight to the source: the United States Patent and Trademark Office (USPTO).
A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks.
Trademarking your logo is done to protect your rights to it — giving notice of your ownership to prevent anybody from infringing upon those rights.
Will you help me trademark my logo?
No. The reason I do not offer trademark assistance is because at core, it's a legal issue. I am not a lawyer, and I do not play one on TV. I do not even want to wiggle my pinky toe in that area. From uspto.gov:
Filing a trademark application at the USPTO starts a legal proceeding. Most applicants hire an attorney who specializes in trademark matters to represent them in the application process and provide legal advice.
...While you are not required to have an attorney, an attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks before you file your application. Comprehensive searches are important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered. Therefore, those trademarks will not appear in the USPTO's Trademark Electronic Search System (TESS) database but could still ultimately prevent your use of your mark. In addition, trademark lawyers can help you during the application process with several things that could seriously impact your trademark rights, such as determining the best way to describe your goods and services and preparing responses to refusals to register that an examining attorney may issue.
Do I NEED to hire an attorney?
To summarize the above: no. You can go online to uspto.gov to file the application yourself. Because the process is complicated for the average Joe and demands strict adherence to its requirements, an attorney basically ensures that it is filed correctly and gives you peace of mind — now and in the future. (You are responsible for enforcing your trademark rights after it is registered. An attorney would be able to set up a "trademark watch" to alert you when someone else tries to use a logo too similar to yours.).
How much does it cost to trademark my logo?
At the time of this writing, the minimum standard filing fee per class (category) is $275 - $325, though there are a plethora of other fees that may or may not apply in your particular situation. Keep in mind that the fee is per class. If your business falls in multiple classes, your fees can add up quickly. (Note that if your trademark registration ultimately is not granted, you will not be refunded the filing fees.) If you decide to hire a trademark attorney, costs could vary depending on the level of service and complexity of your situation. It could be anywhere from a few hundred to a couple of thousand.
How long will it take to trademark my logo?
Well, we're dealing with the federal government here, so it won't happen overnight! To give you an idea, USPTO lists 10 steps for processing an application based on your logo already being in use (Use in Commerce) or 14 steps if your logo is not yet in use (Intent to Use). In either case, after you file your application (step one), it takes 3 months just for it to get to step two. In the best-possible-case scenario, the entire process would take less than a year. But an average is 13 - 18 months, taking into account potential bumps that could occur along the way. USPTO provides an online system to track the progress of your application, and they recommend checking the status every 3-4 months to make sure you don't miss any other filing deadlines. (There are additional forms you will need to complete and return throughout the process.)
So do I really need to trademark my logo?
By now, you may be thinking, "Wow, this seems like a lot of trouble." Well, there are worse things in life, but yes, it can be a little overwhelming. If you decide not to trademark your logo, you do acquire trademark rights simply by using it in connection with your products or services. This is referred to as "common law" trademark rights. However, these rights are only limited to the geographic area in which the mark is used, and they do not give you the full benefits of federal registration.
If you intend to only use your trademark in one state, you can file with your state's trademark office, which is likely to be a much cheaper and faster process than federal registration. (For the state of Virginia the cost is $30 per class). That gives you protection against infringement within your state alone. If you plan on using your trademark in more than one U.S. state, you will need to file with USPTO. If you intend to use it internationally, you may need to file with the country or jurisdiction where you will be using it. On the USPTO website, you will see additional forms for international application called Madrid Protocol. The Madrid Protocol is an international treaty that allows you to seek trademark registration in any of the countries that have joined by filing a single application. At the time of this writing, there are 91 countries that are members.
Ultimately, the decision on whether and how to trademark your logo comes down to a few factors, including:
- What is your service area and what are your plans for growth? If you are truly only a local company, filing with your state is relatively inexpensive and simple enough to do. You may feel common law protection is enough, but it's good to make it "official" — if for no other reason than to be in a searchable database of registered trademarks to ensure nobody unknowingly uses something similar. If you have plans for expansion to another state, is that in your two-year or ten-year plan? If you are an online business, chances are you will be engaged in interstate commerce, so a state registered trademark wouldn't be appropriate to afford you the protection you'd want.
- How serious are you about your business? How stable is it? If you are a brand new startup, you may want to test your staying power before you invest in a process that could take upwards of a year and cost upwards of a grand. Will you still be around then? Will your brand still be the same? What if you needed to modify your logo to better align with your changing business model?
- What are the consequences of registering your trademark? What is the worst-case scenario if you don't? As with any other business decision, you need to weigh the pros and cons of this investment and take an honest assessment of how it applies to you, then be prepared to live with the consequences, whatever they may be.
If I had to give a blanket statement, I would say: if you can afford it, do it; and hire a trademark attorney to make sure it's done right the first time.
For more information on getting started, visit USPTO's Trademark Basics page. And if you are also wondering whether you need to copyright your logo (yes, that's a bit different!) here is a helpful guide on trademark vs copyright registration.