What EXACT Trademark(s) You Should File

When completing a trademark application, one of the most critical questions you will answer is what is the exact trademark you will be registering.

When we ask clients this question, we typically get a variety of different answers. Sometimes, businesses or individual just want to register their name, other times they want to protect a name combined with a logo, and occasionally someone is looking to register a name, logo and slogan.

However, in our professional opinion, it’s important to look at trademarks as singular items. This means that a name, logo, and slogan should all be filed separately. They should rarely ever be combined into the same application.

Take a look at Nike, for example. Visually, it’s easy to see that they have the name Nike, the Nike swoosh, and the slogan “Just Do It” associated with their brand. In reality, these actually make up four different trademarks.

1. The first trademark is the word ‘Nike,’ sans font or design.

2. The second trademark is the Nike swoosh on its own.

3. The third trademark is the slogan “Just Do It.”

4. The final trademark is the particular font they use with Nike.

If Nike were to file all these trademarks together, they would have to include all of it on all of their packaging and tagging without any modifications. However, by filing them independently, the trademarks can be used like Legos. The company can put different pieces together or set them apart. This is why they sometimes have the swoosh on its own, while other times the swoosh is accompanied by the name ‘Nike.’

The drawback of filing all these trademarks on their own is the additional costs associated with applications. However, in this case, the benefits likely surpass the costs.

Why You Should File Your Trademarks Separately

Here are three reasons you should file your trademarks independently of one another.

1. Better enforcabiliy on singular items

The first is that you get better enforceability on a trademark when it’s a singular item like the word Nike. If we file a trademark application for Nike, the swoosh, and Just Do It, and that’s the only registration we have, arguably the word Nike is diluted by the rest of the items in that registration. It doesn’t stand on its own.

When doing an analysis versus another potentially infringing trademark, you have to consider all the artwork and the slogan when considering the potential for confusion in the marketplace or trademark infringement. If you just have the word Nike registered, then that’s the only thing that gets compared to whatever you’re complaining about. So, you get a broader right on the word Nike and a more enforceable right on the word Nike, and on each individual element by separating them and filing them on their own.

2. Protection against future brand changes

The second reason you want to file trademarks separately is to better protect yourself against future changes to your brand. Logos and slogans can change over time, but very rarely does your name change. If you had filed all your trademarks together and decided to drop the slogan, your registration would become void and unenforceable. By having the individual elements protected themselves, you can change the logo, change your slogan, change any individual portion you want, and not lose rights to the other parts you’re still using.

3. Problematic marks will not affect others

Finally, filing these elements independently of one another ensures that if one portion has a problem, it’s not going to affect everything else.

Let’s say the government finds a potential conflict with your slogan. It will refuse that application, but the separate applications for your name and your logo will continue through the process unaffected. If you had filed them all together, the entire application would grind to a halt and you would not be able to get the trademark registered on your name, logo and slogan.

Overall, registering you trademarks separately is beneficial to your brand in the long run. If your attorney suggest you file independent registrations, it’s not necessarily self-serving. There are legitimate legal reasons behind making that filing and making that investment in your company.

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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