Is it better to register just words as a trade mark or a logo?

[glen82]

Hello

I am wondering if anyone can give any advice on whether it offers better protection to register a purely word based trademark (e.g. Company XYZ) or a visual logo treatment of this (a figurative trademark)? I am assuming the former offers broader protection but would be very difficult to obtain?

I'm looking to register a product range but not sure which is the better route to go down and can't seem to find much advice on this online . . .

Any thoughts much appreciated : )

 

[F_B]

The broadest scope of registered trade mark protection is provided for word-only registrations. Essentially, the trade mark protects the use of the words no matter how they are presented. This means you can refresh your logo without having to register another trade mark.

Please also note there is a requirement that a trade mark is only considered to be used if it is used in the form in which it is registered. If you register your current logo, use it for a year, and then refresh the logo, the use of the new logo will not be considered use of the trade mark. This can mean the trade mark is vulnerable to revocation.

The ease of registration of words depends on whether those words are capable of having a distinctive character and are not descriptive of the products.

Trying to register "Bread" for bakery goods will be very difficult and if successful, possibly easily revoked.

Trying to register "Spanners" for bakery goods is likely to be straightforward as it is in no way descriptive of the product.

A registered trade mark attorney can sometimes argue the point and get marks registered which look descriptive at face value (e.g. registration UK00003074155 "Beautifully Buttery", word mark, for use with the goods butter). If in doubt, or you consider your mark to lack distinctive character then seek professional advice.

 

[glen82]

Thanks ever so much for the advice Frazer, much appreciated! You seem to be the trademark guru on these forums so I hoped you might reply.

I would like that broader scope of protection but don't want to waste money trying to register a word only mark if that is very difficult to obtain.

I think I should have a good chance from my searches but I guess you never can be certain. I'm looking to trademark a distinctive phrase that is used as my business name and on my products. It is a phrase used on some products already but its not in common use or used as a trading name by any company I can find.

Thanks again for the advice

 

[F_B]

There is a way that you could have two bites of the cherry for a single application fee.

You can make a series application, for both the figurative and word marks, and if you use the right start application process you will obtain an opinion from the UKIPO on the registerability of each mark in the series. You will also (likely) obtain a series objection and have to delete one of the two marks. At this point, if the opinion is favourable, you can delete the figurative mark and proceed only with the word mark, or if the opinion is unfavourable, progress the figurative mark only.

Right start applications cost the same as a regular application, but the cost is split into two lots. You pay the first half on filing and the second half only if you choose to progress the application after the UKIPO have given their opinion.

PM me if you'd like help with the above.

 

[glen82]

Excellent suggestion, thanks so much Frazer - didn't know I could do that : )

 

[terryashraf]

I would take this a step further - if it is worth considering that you will benefit from word / text mark protection the logos even if changed a year later are still worth protecting in my view becasue there are companies that refresh their logos using various colours and so on. You are better off considering at least variations in colour before you make the application. I will go further and say that consider getting the logos created for use on smartphones etc too. as well as in print and online.

I hope that helps.

 

[F_B]

@terryashraf is correct, the belt and braces approach is to register your word mark and all variations of your figurative mark.

For the purposes of my earlier post, if you wish to register a series of figurative marks I would do that in a separate application to your word mark. A series of up to 6 marks can only be registered if each mark differs in only immaterial details (i.e. changing the colour of some letters). A series application containing a word mark and a figurative mark will very likely lead to a series objection and you will have to delete either the figurative or word mark from the application. As there is an official fee of around £50 per extra mark in the series after the second (i.e. marks 3-6 incur a £50 fee each) it would not be cost efficient to then delete the figurative marks and keep only the word mark. The idea of the above is to ensure you will get something registered if your word mark has only minor distinctive character.

 

[glen82]

Hello,

Just to follow up on this in case of future use to others - @FrazerBye 's advise here was spot on (thanks!). As suggested, I went ahead and made a series application, for both the figurative and word marks for two different trademarks, using the Right Start process.

I received the assessment report on both last week - both reports expressed no objections or concerns about me pursuing a registration for either the word or figurative version of my trademarks; so I know now I can move ahead and try and get the word marks. It was good to have the option to choose rather than having just applied for one or the other.

In fact, for one of the two trademarks, I am being allowed to apply for the both the word and figurative version of the mark as part of one application as they were accepted to be a series (as that trademark is represented as a very simple arrangement of text).

Fingers crossed now that my trademarks get through the two month objection period....

Thanks Frazer! : )

 

[F_B]

@glen82 -You're welcome. Please do get in contact if you do have any problems during the opposition period, although I hope that it is a very boring two months.

 

[XZeng]

@FrazerBye It was really helpful reading your comments on word vs figurative marks.

I also have a similar issue with my Logo. It's composed of 2 elements, the name of the company and a symbol. The elements don't change, but the positioning of the symbol with respect to the name of the company has 3 different variations. Sometimes the symbol is above the name of the company and at other times it's placed in the middle or on its side. Will I need to register for a series of figurative marks or does the positioning not matter in this case? The name of my company is very unique and is not indicative at all of the products we are selling. I'm wondering if it will be better, in this case, to register it as a word mark.

I know which classes I would like to register my company under, but on the application form, there are thousands of terms I need to select. Do I need to select all the relevant terms for my business? Do they have any bearing on the level of protection the mark will give us? If some of the terms are not used, will they weaken the trademark?

Would really appreciate any help you can give me on this topic
Thank you so much in advance!

 

[F_B]

@XZeng - replied by pm.

 

[Danielj112]

Hi Frazer

I have just registered my brand as a Word Mark and Figurative logo.

As you said they would above, they rejected the application on the basis that it should be either a Word or Figurative application, not both.

My brand name is my logo, it has the words of my brand at the bottom and then an abbreviation of the brand name above it. So brand name e.g. "FutureSports" with FS above it.

Is it best to register this as a Word mark or figurative?

As my brand name is part of the logo do I just register it as figurative and it covers the name of the brand and the logo?

Or is it best to register the Word mark which would cover the name of the brand and the logo as long as I keep the brand name in the logo?

Thanks

Daniel

 

[F_B]

If you can obtain a registration for the text alone then this will provide protection for the use of that text in any form i.e. if you refresh your logo at a later date but use the same words you will not need a new trade mark, you will still be covered by the registration for the words only.

The point of the above is to receive an opinion on the registerability of the words alone. If objections regarding distinctive character or similar have been raised against the word only mark then proceed with the figurative. If there are no objections regarding the word then proceed with the word only.

Note that I'm not in possession of the full facts of your application. There may be other risks, e.g. proceeding with the word only may incite potential third party opponents. If you are unsure please have a professional assess the exam report.

 

[zerop]

I am in a similar situation however i want to know; if i apply for the word only and not the logo and its rejected rather than going for text and image logo (i assume the latter would be easier to acquire?) do i then loose the money and have to reapply?

 

[surreyaces]

If your application is rejected in its entirety then yes you would lose the money that you spent on the application. If you are applying in the UK why not file both versions together as a series - Frazer provides some good advice on this above.

 

[Nikki Williams]

I am setting up a new company and was wondering if it was best to registered just the name of my limited company or the name and the logo?

The name of my company has a colour in it and is related to the industry that i am in.

I was wondering what the best way to register a trademark would be.

Any advice would be greatly appreciated.

 

[surreyaces]

Hi Nikki - have you read the thread? There's some good, relevant advice in there. Let us know if you've any questions afterwards.

 

[Gecko001]

Hi Nikki - have you read the thread? There's some good, relevant advice in there. Let us know if you've any questions afterwards.

Agree. There have been several threads on this topic. This thread has particularly good advice in it.

 

[Courtney Stephenson]

Hello All,

I have read the above thread and it's been very informative. I do believe, however, that the situation i am undergoing with trademark at present is not covered entirely in the above thread.

I have at present a figurative logo (not inclusive of the brand name or representative of what the brand sells), a phrase (not even inclusive of the brand name, however is extremely distinctive) and a word mark (not representative of what the brand is); the word mark of course being the name of the company.

My question is, if i wish to put these forward under trade mark application, am i required to make separate applications for them (3 sets of £170) or does the IPO allow an application whereby they're submitted together but can be used individually among the products?

There will be instances whereby the word mark, figurative logo and phrase will be used on one product but not be featured side by side. Whilst in other instances, 2 of 3 will be used and so on.

Any and all feedback is welcome!

Thanks

 

[Russell Munro]

Hi Courtney,

It would be good to get a little more info before providing you with some advice. What is the “phrase” you are referring to?

A trade mark registration is a tool that allows you to prevent third parties from using a similar/identical mark to that of your registered mark. How you “use” your mark(s) should be considered seperately, in that you’ll be able to use your mark(s) in whatever manner you wish. In other words, you don’t need a registered trade mark to be able to “use” your marks.

If you wish to protect these marks, there a various ways you can do so depending on your budget. Filing separate applications to protect each element you’ve discussed would be the belts-and-braces approach, but is obviously more costly. You would be able to protect all three elements as part of one application, however your scope of protection would be narrower than if you were to have separate applications protecting each element.

Feel free to drop me a PM and we can discuss in a little more detail.

Thanks,

Russ

 

[Swordfish81]

Hi have a doubt and would like to see if someone could give me a hand.

trying to register a brand that has Ö on it but would like to also protect the same word with O without the dots. Do I have to register both or can it be a series?

 

[surreyaces]

Apply for the marks as a series. If the trade mark authorities do not agree that the two marks form a proper series then you can just delete one of the marks from the series.

 

[Swordfish81]

Thanks surreyaces that's really helpful

The logo is simply the same word with funky letters and from what I read, registering the text mark should be enough right?

 

[surreyaces]

Hi there - I'd file for the words only because that will give you broader protection.

I would recommend conducting a clearance search before you file your application if you haven't already done that.

 

[UsmanBarki]

Hi.

I am wondering if I can get some help here too.

Lets say, the trade mark I am after is "ACME Clothing Co.".

Would I be better off applying for variations such as "ACME Clothing Co", "ACME Clothing Company" and "ACME Clothing" as a series?

Or are they considered similar and if "ACME Clothing Co." is trade marked, then no one is likely to be granted "ACME Clothing Co", "ACME Clothing Company" or "ACME Clothing"?

Thanks

 

[surreyaces]

It sounds as though the marks would hang together as series. Bear in mind though that the UK trade mark registry will not block future applications on the basis of your trade mark registration - you will need to oppose the applications that you believe conflict.

 

[Deleted member 320254]

Hi
Wish I'd found this forum sooner! I'd already submitted my trademark application in the form of a text, as I thought that would give us a broader protection of our name, however, it was refused on the grounds of being descriptive. Would I have a better chance if I was to reapply with our logo picture which has our name beneath the picture, the picture is related to the class we want to trademark in, but not an obvious picture of our product. Thanks in Advance

 

[MrMike]

Hi all, some great advice on this thread.
I would like to ask for some info regarding registering a trademark of a company name and the acronym of said name.
For example, if I wanted to register the company name 'Circles and Rectangles' and the acronym of this company name 'CAR' would these both be admissible as part of a series or would two separate applications be required?
If I were to register the trademark as 'CAR Circles and Rectangles' would both the 'CAR' and 'Circles and Rectangles' be able to be used as written logos separately or only together as written under the trademark?
Hopefully that makes sense! Any advice is appreciated! Cheers.