David Airey is an independent graphic designer working with companies of all sizes since 2005.

Logo trademarking tips: a legal perspective

Toyota logo design

This post has been republished and edited with the kind permission of Steve Baird, Chair Trademark & Brand Management with Winthrop & Weinstine Attorneys, Minneapolis.

Steve has represented clients in trademark and related intellectual property matters for more than 18 years, with clients spanning virtually every industry. Having focused on trademarks and the legal implications of branding and design, Steve is a frequent speaker and author on trademarks, brand management, and related intellectual property subjects.

Pros and Cons of Stand-Alone Non-Verbal Logos and Other Trademark Styles: A Legal Perspective

This is my effort to identify, from a legal perspective, some of the pros and cons of non-verbal logos and other trademark styles.

But, before addressing the legal implications, it’s worth noting that a number of our insightful readers and commenters have already helped articulate a variety of pros and cons from a business and marketing perspective (view the comments on Duets Blog). By my count, there appears to be consensus on at least two important points:

  1. Having an iconic stand-alone non-verbal logo or wordless trademark symbol is highly desirable, especially for truly international brands; but
  2. be prepared to spend a lot of time, effort, and significant resources to achieve one.

In addition, at least one designer has written that having a logo without words “can be a big branding pain” for a variety of reasons. She identifies three basic logo styles:

  1. Text logos
  2. symbol logos
  3. combination logos

Examples of text logos are the Coca-Cola script, the Yahoo! stylized word, the Google stylized word, and the highly stylized eBay logo.

On the other hand, the Shell logo, McDonald’s Golden Arches, and the Nike Swoosh, are all good examples of symbol logos. Here’s a message board collecting a number of other possible candidates for symbol logos, each capable of standing alone — without words — yet still having a lot to say to consumers.

The designer referenced above contends that for a variety of reasons, combination logos often make the most sense. A combination logo “combines both a symbol and the company name. The symbol and text can be integrated together, side by side, or with one located above the other.”

Generally, from a trademark owner and legal perspective, I prefer the combination logo too, but not the “integrated” type, instead the “side by side” or the “one above the other” type. The Mercedes-Benz combination logo shown below nicely illustrates the “one above the other” type of combination logo:

Mercedes Benz logo design

The combination logo is your best bet for trademarking

Generally, this format and style is more flexible, easier to clear for adoption and use, easier to register and protect each element separately, and easier to enforce rights in both verbal and non-verbal elements.

With respect to enhanced flexibility, a trademark owner can elect to always use the verbal and non-verbal elements together, perhaps as a way of reducing the risk of infringing on another’s prior rights in a mark perhaps similar to either the verbal or non-verbal element.

Jack Cuffari of Brand Smacks commented that the combination logo is the “best-case scenario” because it is possible to “wean the symbol away from the name once research has proven that the target audience gets the connection, so that the symbol can be used alone, or in conjunction with the brand name.”

Indeed, few symbol logos spring into existence without a history of having been used side by side with the underlying brand name, so, the symbol adopted by the “Artist Formerly Known as Prince” is probably the best exception to this general rule:

Prince symbol
  
With respect to ease of clearance, it is generally easier to clear physically separable combination logos over text logos or integrated combination logos, since the Mercedes-Benz verbal portion involves a straightforward word search, and the corresponding three-point star within a circle symbol involves a straightforward design search.

In fact, it is often more difficult to obtain a comprehensive and reliable trademark search report for a proposed text logo or an integrated combination logo as compared to a symbol logo or a physically separable combination logo. Because of design coding challenges, it is easier for a trademark searcher to locate prior marks of potential concern when one’s proposed logo comprises a stylized star or shell design than a text logo that may be unknowingly or unintentionally similar, not to the word, but to the color combination and lettering style employed by, say, Coca-Cola, Yahoo!, Google, or eBay:

eBay logo design

With respect to ease of registration, if the brand name is physically integrated and part of or even touching the non-verbal design elements, in many cases, the non-verbal design elements cannot be separately registered as a trademark. To register the non-verbal design elements of an integrated combination logo, the applicant must convince the U.S. Trademark Office that the non-verbal design elements actually function as a separate trademark..

This can be difficult to establish if the verbal element is always present within the design. On the other hand, the Trademark Office views a non-integrated combination logo as comprising at least three different marks, each of which may be registered alone:

  1. The word or words;
  2. the non-verbal symbol;
  3. the combination of verbal and non-verbal elements.

By being able to register each element separately at the outset, even during a time when they are always used together, it facilitates the trademark owner’s ability to eventually “wean the symbol away from the name” with added confidence.

For more information on the importance and benefits of federal registration, see my previous post entitled “The Power of Federal Trademark Registration Remains Strong in Tough Economic Times.”

With respect to ease of enforcement, assuming each element of a physically separable combination logo has been registered, enforcement is enhanced too, for the reasons already stated above. Having each element registered separately, even though they may only be used together, permits the Trademark Office to refuse registration of later marks that are confusingly similar to either the verbal or non-verbal element. In the event that the Trademark Office doesn’t see a conflict for some unexplained reason, the non-integrated combination logo format also enhances the trademark owner’s ability to challenge registration of another’s mark that may not be confusingly similar to the combined elements, but to one of them.

Disclaimer

This blog post (first published unedited here) is provided for educational purposes only. It is not intended to be advertising, and it is not intended to be and should not be relied upon as a source of legal advice. You should not rely upon the content without first seeking the advice of legal counsel. The author of this blog post and his employer, Winthrop & Weinstine, P.A., expressly disclaims all liability in respect to actions taken, or not taken, based upon the content of this blog post.

Winthrop & Weinstine logo design
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Logo trademark resources

Do you have any trademarking stories or tips?

Update: 02 April 2012
Here’s a relevant post by Jeff Lapatine: Can I use that trademark? Maybe.

Frosty Toyota symbol by Trynes

My second book on Amazon

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20 appreciated comments about “Logo trademarking tips: a legal perspective”

  1. Great post. I am going to bookmark and read more often. I love your blog template by the way. If you need any assistance customizing it let me know!

  2. Thanks for that post – very informative. There’s plenty of useful stuff there – stumbling this…

  3. Can you tell me who did your layout? I’ve been looking for one kind of like yours. Thank you.

  4. Very informative.

    I’ve been through a couple of trademark filings and you are absolutely right to point out that it can be a slow and arduous process. But once complete, the rewards are immeasurable.

    Thanks also to the attorney for sharing.

  5. I find it quite disturbing that the eBay logo is registered. Sure it has to be, but it must be one of the worst famous logos out there. It has stretched letter’s that merely overlap and says nothing about the business. It looks like one of those logos the CEO made on Publisher® before the company got going.

    Anyway, now that rant is over. Great article Steve ;)

  6. Very interesting – I’ve only been a designer for a short while, but I’ve got to admit the subject of trademarks and copywriting is one I should know more about then I do – and seeing as I’ve just designed a new logo for myself, I’m looking forward to any following posts on the subject.

    And thanks for your excellent blogs, they’re always a great read!

  7. Excellent summary of Best Practices in Logo Registration. Thnx!

  8. That would be me, Henery, but my blog design is unavailable for use. Sorry.

    I’ve not been through one myself, Joann, so I’m sure I could learn a thing or two from you as well.

    Nice rant, Andrew. I’ll go along with that. And Aaron, no worries at all. Good of you to visit, and comment.

  9. Really terrific post David.

    Cheers,
    Jason

  10. Another gr8 post here David.. it’s a subject not many of us designers are well-informed of.. I enjoyed reading the whole explanation about combination logos, and one key-point here is that if a combination logo is well designed & executed, and registered separately, eventually, the emblem or symbol may be used solely for the reference of the trademark.

    It’s also very interesting how the big names – eg. McDonals, Apple, etc.. – do not even need to mention their names anymore, since everyone literally memorized their looks. But again, it’s taken them years to achieve this solid look and familiarity.

    Cheers for a superb article..

  11. I think it is great to have a unique logo, and couple it with a catch phrase to make the product even more memorable. A fine example is Nike- A simple symbol along with a great catch-phrase.

  12. Thanks for posting this! Did not know that the integration of type and mark could cause issues in trademarking. This could be very useful when vetting logo concepts with my clients.

    @Henery: um, if you’re going to ‘use’ someone’s design, probably not a good idea to ask a designer if you can do that… lol

    re ebay: interesting feedback above… I find the tension in the mismatched letterforms visually interesting, and I love the transparency, as well as the colors… but hey, who said I had good taste… lol

  13. The e-bay logo proves it! What’s a fancy logo without a quality service or product behind it?. I kinda like it, and it’s been around for a while, doesn’t that make it a good logo?

  14. This has been a most informative article to me. I think many designers do not know as much about the legal side as perhaps they should, me included. It is something I have been meaning to delve into for some time and this article has provided a great start. I think the examples are also excellent and really help to add clarity about the different logo styles. Thank you for sharing an excellent post.

  15. My opinion is that you shouldn’t go with a symbol only approach unless you are sure you have the power to become very well known in your industry, fast. The key to a symbol only approach is that every time your user sees it, they think of you – and if you aren’t big enough to accomplish this then half of your marketing will consist of people seeing your logo and never associating it with your business; and hence losing advertising potential.

    I do agree that a combination would probably work best if you are stuck on a certain symbol already. Otherwise, a nice stylizing text logo would probably be best.

    Great post, much appreciated!

  16. Great article. Logo trademarking is very important for any business to get their identity in the market.

  17. I agree, Lara. I don’t know much about logo trademarking at all, so this was a welcome addition to my blog (with more to follow).

    Rachel, Matty, Bryant, I learned a thing or two as well from what Steve shared, so you’re very welcome.

    Kiren, no, just because a logo has been around a while, doesn’t make it good, but you’re absolutely right how it’s the product or service behind the design that truly makes it.

  18. Great post! Haven’t yet found good posts on the legal side of trademarks/logo designing such as this.

  19. A well rounded article. I’m designing a logo for a business and they had asked me about trademarking. I’m going to send them here to read this.

    Well put. Thanks!

  20. Wow… I didn’t know that registering elements separately (though used together) could cause a problem down the road. I think you saved me a ton of trouble as I move forward to tradmark one of my brands. Thanks!

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