Combined Trademarks - File Separately or Together?


Often, we receive requests to file what is called “combined” trademarks—that is, trademarks that consist of several elements, for example, the name, logo, and tagline. Find out in this cartoon if it's a good idea to file them as a single trademark or as several separate trademarks.





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TRANSCRIPT

NARRATOR: Scott runs a printing company, Hurdy Gurdy Print. In addition to this remarkable name, his company has a logo and a tagline, “Imprinting Your Awesomeness”.

NARRATOR: Scott understands the value of trademarking, but is on a tight budget. Scott is considering filing all elements of his brand as a single trademark.

NARRATOR: Scott took advantage of the Trademark Factory’s offer and ordered a free, no obligation trademark search for the whole shebang, including the name, logo and the tagline.

TRADEMARK FACTORY: Hello Scott, Trademark Factory here.

SCOTT [really anxious]: So, is it registrable? Can I register it?

TRADEMARK FACTORY: Yes, but I don’t recommend it.

SCOTT: Why not?

TRADEMARK FACTORY: I would strongly recommend that you break it down into elements and register these elements as separate trademarks.

SCOTT: Oh, you’re just saying that to charge more money.

TRADEMARK FACTORY: This has nothing to do with it.

SCOTT [irritated]: What then?

TRADEMARK FACTORY: Let me ask you a question first. Why do you want to trademark your brand?

SCOTT [condescending and still irritated]: What kind of question is that?! Of course to make sure that nobody steals my brand!

TRADEMARK FACTORY: Well, how would you feel if someone stole your tagline, and used it with their own name and their own logo?

SCOTT [threateningly]: Oh, I’ll make them pay. They’ll regret it! I’ll haul them to court and sue them for trademark infringement.

TRADEMARK FACTORY: If you register everything as a single trademark, you will probably lose.

SCOTT [stunned]: How come?

TRADEMARK FACTORY: Just because someone is using one of the elements of your trademark, does not always mean that they are infringing on the whole trademark. This is one of the two reasons why we recommend breaking combined trademarks into their constituent parts.

SCOTT [exasperated]: What, there’s more?

TRADEMARK FACTORY: Let’s say we register your combined trademark, and then—as you continue to grow the business—you change the logo, or you change the tagline, or you change the fonts, or you change the colors, or you change the positioning of the elements... You do realize that this may happen, right?

SCOTT [thoughtfully]: Well, sure… Who knows what tomorrow brings…

TRADEMARK FACTORY: If for three years you don’t use your trademark as it was registered, then anyone (including your competitors) can have your trademark cancelled.

SCOTT [stunned]: What?!

TRADEMARK FACTORY: If the way you use your trademark is substantially different from the way it was registered, then you may end up with no trademark at all.

SCOTT: Holy-moly! So what elements would you break it down into?

TRADEMARK FACTORY: First, let me tell you what elements I see in the image that you sent us. I don’t think you should register them all, but here there are.

SCOTT: OK

TRADEMARK FACTORY: First the name: HURDY-GURDY PRINT.

SCOTT: That’s obvious.

TRADEMARK FACTORY: Then, the name using the specific font that you used:

SCOTT: Uhuh.

TRADEMARK FACTORY: Then the logo as black and white.

SCOTT: Oh…

TRADEMARK FACTORY: … and the same logo in color.

SCOTT: Are you serious? File these as separate trademarks?

TRADEMARK FACTORY: You should watch our cartoon, Claiming Color as a Feature of a Trademark. There I explain the strategy behind claiming or not claiming color as a feature of your trademarks.

SCOTT: OK.

TRADEMARK FACTORY: You could also consider the combination of the name and the logo.

SCOTT [cry for mercy!]: Aaaaaaaaahhhhhhhhhh

TRADEMARK FACTORY: Then your tagline, “IMPRINTING YOUR AWESOMENESS”

SCOTT: In all caps?

TRADEMARK FACTORY: Yes. And then, the same tagline using the font that you chose.

SCOTT: Are we there yet?

TRADEMARK FACTORY: And finally, the combination.

SCOTT: Are you kidding me? That’s 10 trademarks!

TRADEMARK FACTORY: As I said, I don’t think you should register them all. Here’s what I would do if I were you.

SCOTT: I’m listening.

TRADEMARK FACTORY: I’d register your name HURDY-GURDY PRINT without reference to any font, which will allow you to protect the name, regardless of how it’s written.

SCOTT: That’s one.

TRADEMARK FACTORY: Then, I’d register the logo.

SCOTT: As black and white or as color?

TRADEMARK FACTORY: Color.

SCOTT: That’s two.

TRADEMARK FACTORY: I would also register the combination of the logo and the name, and this time, I would not claim color as a feature of the trademark.

SCOTT: This way we will also protect the black and white logo?

TRADEMARK FACTORY: Exactlty.

SCOTT: OK, I get it. That’s three.

TRADEMARK FACTORY: And finally, the tagline, without claiming any particular font: IMPRINTING YOUR AWESOMENESS.

SCOTT: That’s four.

TRADEMARK FACTORY: That’s it.

SCOTT: That’s still 4 times more trademarks than I was thinking of initially.

TRADEMARK FACTORY: Yes. This way, you will have 4 strong trademarks as opposed to a single weak one.

SCOTT: I don’t have four times your flat fee.

TRADEMARK FACTORY: We actually provide significant discounts if you register more than one trademark through us. If you are REALLY tight on the budget, then let’s narrow it down to 3 marks: the name with no font, the logo in black and white, and the tagline with no font.

SCOTT: No. I want to do it right. Hurdy-Gurdy Print is my business, not a hobby.

TRADEMARK FACTORY: With this attitude, I’m sure you will become a massive success!

SCOTT: Let’s get it started!


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Disclaimer: Please note that this cartoon is not and is not intended as legal advice. Your situation may be different from the facts assumed in this cartoon. Your watching this cartoon does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this cartoon as the only source of information to make important decisions about your intellectual property.

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