Author: Donna Chesteen, Esq.
What do chickens and eggs have to do with trademarks? Nothing, really. I just thought about that question when I was talking to a client who was trying to decide whether he should file a trademark application for his company’s name or his company’s logo first. And, as any good attorney will tell you—it depends—but usually it should be the chicken (I mean, the company’s name). Why should the company’s name be filed first? To save you money.
When somebody comes up with a company name, they almost always immediately decide they want a cool logo. The logo is typically much more exciting than the name and the instinct is to file a trademark application on the logo to protect it. So, why do I say you should file an application for the name of the company first? I say that because the company’s logo usually contains the company’s name. In fact, it is a good rule of thumb to not even have a logo created (if it contains the company’s name) until the name has been granted trademark registration by the USPTO. Once the company’s name is a registered trademark, it is likely the USPTO will also grant a trademark registration for a logo that contains that trademarked name. So, filing for a trademark on the name first can save you money in two ways: (i) it can save you money on the design of a logo that cannot be used if the name is not trademarkable; and (ii) it can save you money on the trademark application fees and attorney’s fees required to file a logo application that gets rejected.
Speaking of trademark applications, there are a couple of other questions I get quite frequently. To make this simpler, I’ll use an example. Let’s suppose “Cool Images” is a registered trademark. Can you trademark “coolimages” or “Kool Imagez” if these marks are used in connection with goods or services that are similar to those of Cool Images? The answer is likely no. Many people think that because “coolimages” is one word instead of two and because “Kool Imagez” is spelled differently from “Cool Images” that they represent different marks. But, one of the most common grounds for trademark rejection is a likelihood of confusion as to the source of the good or services. It is not necessary for the marks and the goods/services to be exactly the same; they only have to be similar enough to cause consumers to possibly erroneously believe they came from the same source. If the marks sound alike (i.e., they are phonetic equivalents), that similarity may be grounds for refusal due to a likelihood of confusion. Therefore, if “Cool Images” is a registered trademark and you try to register “coolimages,” your application will most likely be rejected. Even if you decide to spell your mark “Kool Imagez,” it still sounds like the registered mark and therefore may support a rejection based on the likelihood of confusion.
Trademark applications can be quite complicated and confusing. The questions I have addressed in this blog are just the tip of the iceberg.
Contact me and I’ll be happy to help you navigate through the confusion of trademarks and save you money! But, sorry, I don't know the answer to the chicken/egg question.