Registering the trademark for your logo is an issue that causes a lot of confusion in small business circles. As a graphic designer, I don't handle copyright or trademark issues, but I've seen my clients go through the process enough times that I have some thoughts. I'll start by saying, understanding this stuff matters. If you're spending time and money building your brand, you want to make sure you know how to protect its integrity.
In this post, I’m sharing some basic answers to questions I hear often. Of course, none of this should be taken as legal advice—just one graphic designer and branding expert’s attempt to make sense of how to keep your logo safe.
Do I need to copyright my logo or trademark it . . . or both?
Copyright defends original artistic and literary works (not ideas, actual tangible works) from being reproduced or modified without authorization for a set time period. Trademark protects a design, symbol, business name, or slogan that identifies goods or services offered by a specific entity (like your LLC, for instance). Because an originally designed logo is both art and a brand symbol, you could technically register for copyright or trademark protection, or both. All that said, most of my clients end up going for trademark protection after consulting with a lawyer.
Why does having federal trademark protection for my logo matter?
Once you have federal trademark protection for your logo, no other business is allowed to use your mark or something suspiciously close to it in relation to their goods or services, anywhere in the U.S.
Federal trademark protection for your logo protects the integrity of your brand. It deters imposters or competitors from capitalizing on your brand recognition and the good will associated with your products or service. It also keeps other brands’ potentially poor products or services from tarnishing your brand.
If another business does try to use your trademarked name or logo for their business, you can work with an attorney to enforce your rights. Sometimes this means sending a cease and desist letter—or even contacting Facebook, Instagram, or other online service providers to have a third party’s page shut down. In other cases, you may even want or need to file a lawsuit for damages. The bottom line is you'll have the ability to address the situation because you thought ahead and filed for legal protection of your mark.
How do I apply for logo trademark protection?
While Legal Zoom and other online services say they can get this done, I always advise my clients to connect with a trusted intellectual property (IP) lawyer. IP attorneys have specialized training and experience that helps them spot potential challenges early on and figure out the appropriate level of protection. They have their finger on the pulse of the ever-changing federal trademark policies and requirements.
One attorney’s name I share on the regular is Diane M. Chubb, Esq. Diane has over twenty years of experience in the field and is incredible at breaking down complex legal issues into words anyone can understand. I asked Diane to share three things that she encourages clients to think about when applying for federal trademark protection. Here’s what she had to say:
“Applying to register a trademark requires a strategy, based on short and long term goals. It’s far more than just getting online, clicking a few buttons, filling out a form and voila!
The first step is always assessing risk. How will the Trademark Office treat your application? Does your mark infringe the rights of a third party? Don’t spend the money and time on this process to invite unwanted issues.
Second, think carefully about how you are using, or intend to use, the mark. What are you actually selling? Is the brand used with goods and services that are core to your business, or merely promotional?
Finally, keep good records and pay attention to deadlines. An experienced attorney will make sure responses are filed in a timely manner, but track sales of products and services. It may become critical later on to supporting your rights."
What is the risk of not applying for federal trademark protection for my logo?
The biggest risk is that you won't have a solid legal basis for defending your logo. Suppose you haven't filed, or haven't filed correctly, for protection with the U.S. Patent & Trademark Office. In that case, you are likely to rack up hefty legal fees and related expenses unraveling the issue. Even still, you might not be successful. In a worst-case scenario, someone could swipe your logo design, apply for federal trademark protection themselves, and then send YOU a cease and desist letter.
Here's an actual client story that had a happy ending but could have gone badly. I did the branding for local mushroom farmer Brad Allain of Wildwood Mushrooms in 2018. After sketching up some concepts, I had our top choices painted by an illustrator I work with. We then chose a favorite, refined it, and I vectorized it, and added typography. The logo was complete, and Brad started using it for his business.
A few years later, in fall 2020, Brad was shocked to see a business on Facebook that had taken his logo, removed his business name, and replaced it with theirs. Total small biz foul. Wildwood Mushrooms did not hold federal trademark protection for the logo, but Brad reached out personally and explained that this was his logo and asking them to stop using it. Thankfully, the other business apologized publicly and removed the stolen logo from all of their pages and materials. In this case, things turned out well, but in an alternate universe could have been a nightmare.
So, is trademarking my logo is a must?
Well, yes and no. It depends on your appetite for risk.
Let's imagine your small business's brand mark is a hand-scripted version of your name or your initials. The odds are low that someone would have the desire or need to swipe that. But, if you're a spa and your logo is an image that might appeal to other spa owners, it might be more worthwhile. Imagine if someone pulled a "Wildwood Mushrooms" on you but refused to stop using your stolen logo. If you couldn't legally get them to stop, you might be forced to rebrand, pay for new signage, business cards, collateral, and merchandise. That level of expense can be a huge hit for a small business. So, if you have the budget to protect your logo, it's often a smart investment.
While I can't help you with the nitty-gritty of trademark law, I hope you'll reach out to Diane if you need any additional help. I love connecting my clients to trusted attorneys, copywriters, photographers, printers, and other experts in my network.
Fill out my Brand Matchmaker form if you need a service provider to help build your business. No matter how small your staff is, strong brands are a team affair!