Trademark Registration for BIMI Authentication

Have you heard of BIMI?

It is a security feature for emails that helps your outgoing messages avoid someone’s spam filter.  

To qualify for BIMI authentication, one of the requirements is that you have a trademark registered for the logo that will appear on the top left-hand corner of your outgoing messages.

Having your emails blocked by spam filters isn’t the only issue you face in getting your emails received and read. The sheer number of emails being sent can make it difficult for customers to notice your messages.

BIMI can take care of both these issues. When someone receives your email, they will see your logo in the top left-hand corner of the email (helping it stand out in their inbox) and the email service provider knows that the email is being sent from a trusted address. 

What is BIMI?

BIMI stands for Brand Indicators for Message Identification, and it is a relatively new security feature for emails that can authenticate your messages. You can prevent scammers or unauthorized users from using your domain by working with other authentication and security protocols like DMARC and DKIM. In addition, BIMI gives your customers confidence that the emails they receive from your domain are actually from you. 

Emails that use BIMI have the company’s logo displayed in the email recipient’s inbox instead of a blank space or generic symbol. This not only gives customers peace of mind that they can safely open your emails, but it also makes your message stand out with a higher level of professionalism. This added layer of security is necessary due to the increasing prevalence of email scamming, spoofing, and phishing. Your email messages are likely to be deleted without being opened if the recipient cannot ensure the message is safe. 

Email marketing strategies are common practices for many brands, but knowing how to convince customers to open your emails is critical for this marketing method. Catchy subject lines and value-added content are not enough; customers need to know they can trust your emails before they will even open them. BIMI is an effective way to build that trust and improve your click-to-open rate. 

How is Trademark Registration Related to BIMI?

The process of implementing BIMI in your emails includes the requirement that your logo is a registered trademark. BIMI uses a Verified Mark Certificate (VMC) for this, which currently means that trademark registration must be completed with the United States Patent and Trademark Office (USPTO). A VMC is used to verify that your company legally owns the logo. Obtaining a VMC as part of the BIMI process helps protect your logo from spammers and other users who may try to forge it for their own purposes.

Your VMC is valid across multiple domains but only applies to one logo. Separate logos require separate trademark registrations. A VMC can be obtained for a variety of marks, including:

  • Graphic designs with no alphabet characters.
  • Designs that include both design elements and words.

These two types of trademarks may seem all-encompassing, but there are limits and rules for the logo you submit in your application.

What Trademark Should be Registered for BIMI?

When completing a trademark application for purposes of obtaining a BIMI authentication it is important to ensure you comply with the requirements and guidelines by using the correct logo. You will want to optimize your BIMI logo for the space it will be in. How will the logo appear in an email inbox, and how might this be different from existing logos? 

Designing your BIMI logo does not mean creating something completely new or different from your current logo. However, there are best practices you should follow to ensure you optimize it for emails. The general guidelines suggest that your BIMI email logo should be:

  • Centered in a square
  • On a solid background
  • Saved as an SVC file
  • Under 32kb

You should also test the logo by cropping it to fit in a circle and assessing the appearance in that format. Your logo must be stationary; animations or moving designs are not permitted.

In addition to these formatting factors, there are also federal regulations that dictate how a logo must be used in order to complete trademark registration. The USPTO cannot approve your registration unless you meet the use-in-commerce requirement established by the Trademark Act. This requirement states that you must actually use your logo in commerce with your provided services or goods. 

The USPTO considers your mark to be used in commerce with goods if your products are being transported or sold and the logo is displayed on the product itself, the packaging, or the displays. If your business offers services, the requirements for use in commerce with services is that your services are being rendered, and the mark must be used somehow in the rendering, sale, or advertising of the services. 

Essentially, this means that you cannot just create a logo for the purpose of obtaining a trademark; it has to be a mark that you utilize in your business for a commercial purpose. 

How Does Trademark Registration Work?

In order to complete the BIMI process, you must first go through the trademark registration process. This step will likely be the most time-consuming part of obtaining your BIMI. Be prepared to wait for your VMC because completing registration can take over a year. Currently, the USPTO takes ten or more months to examine trademark applications and between 12 and 16 months to approve them. 

Once you’ve decided upon the logo you will use for your BIMI, conducting a search of the USPTO’s site is a good idea to ensure no other similar marks are already registered. Determine which products or services the requested trademark will apply to and select a trademark class. 

Due to the complexities of filing a trademark application, it is recommended that you hire an attorney to assist with the process. Some studies have found that hiring an attorney can increase the chance of success of a trademark application by up to 50%.

It is very important to keep in mind that a trademark application will be reviewed by a government examiner. If you are not meeting the basic requirements the application will be denied, further slowing down the process to obtain your BIMI certification.

Should You Get BIMI for Your Business Emails?

Your logo displayed next to inbox messages lets email recipients immediately recognize the email as a verified communication from your business. BIMI can increase the effectiveness of your email marketing campaigns by building trust with your customers and increasing brand awareness. You are in the best position to decide what is right for your business, but BIMI implementation deserves some serious consideration. 

Having enough information to make informed decisions is the best way to approach any new opportunities. BIMI offers your business:

  1. Increased brand recognition, which is vital for revenue, credibility, and customer experience.
  2. A more secure messaging method that allows you to connect with more customers because they trust your emails are safe.
  3. Higher levels of professionalism by displaying your logo within the email inbox

Despite the many advantages, the process of obtaining BIMI can be daunting. There are numerous technicalities that many people feel confused about, including DMARC authentication and formatting SVG files. Filing an application for a VMC is also currently time-consuming, with some trademark registration decisions taking as long as 16 months to finalize. Ensure you are familiar with the requirements associated with each step to avoid mistakes that could prolong the process further.

If you have a business and are looking for ways to improve email open rates or add credibility to outgoing email messages, implementing BIMI could be an effective option. 

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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