One of the most important things to decide when protecting a trademark is deciding what type of trademark to protect. While there are various types of trademarks, word trademarks and logos make up over 99% of all applications. So, the question is, how to choose between them.
What’s best for you?
As a general rule, word trademarks give stronger rights against third parties so in most cases our primary recommendation is protecting the word, i.e. the name of the product or service. However, there are many considerations that affect that choice, so it is impossible to say categorically which option is the best.
To make the most of the this post, you should have some understanding about trademark’s “distinctiveness”. You can refresh your memory here.
Below are some famous brand names used as examples on how a startup should decide how to protect their brand in a way that is most cost effective. Remember that our advise to the owners of these famous trademarks would not be the same as to a startup struggling to make ends meet.
Example 1 – Facebook
If you take just the name and logo, the choise is between word FACEBOOK and the logo. In this scenario there is a word (“facebook”) that is distinctive and a logo that has a relatively common typeface and blue background. The logo version does not have any particularly “distinctive” elements, so for a startup our advise would probably be protecting the word “Facebook” only. Of course, if resources allow, protecting both would be preferable, but assuming that resources are always very limited for startups, we would most likely advise to protect the word “Facebook” only.
Example 2 – Booking.com
Here the choise is between the name “Booking.com” and the logo. Because the name “booking.com” is not distinctive enough for registration, our advise in this case would be to try to protect the logo instead. The Booking.com logo has in fact been protected in the EU as a logo trademark. The word “Booking.com” has also been registered as a trademark, but this has been possible only with very large scale use throughout the European Union. So originally the name “Booking.com” was not protectable as trademark, but it has acquired distinctiveness through its extensive and long-term use. This would not be the case with a startup brand name, so our advise would be to protect the logo and leave the protection of the word for later date when it has been used already for a long time.
Example 3 – Disney
Our third case, Disney, is an example of the situation where both the word and the logo are distinctive. It could be easy to imitate the the overall appearance by replacing word “Disney” with a completely different word, but using the same font. In this example our advise would be to protect both word and the logo separately, because they both increase the overall protection and leaving one out would leave room for others to take advantage of the brand without necessarily infringing the protected trademarks. So choosing only one (word or logo) would leave the brand vulnerable. Sometimes hard choices are needed, and in this case if only one trademark (word or logo) was chosen, we would ask the client which one of them would more likely be imitated. We would probably have a slight preference to protecting the word,
… so the rule is…
When the name of the product or service is distinctive, you should protect that first. If you have a logo that is also very distinctive (e.g. like the Disney logo) you should protect that too. If the logo does not have any particularly distinctive elements, for example if it merely consists of the word written in a particular relatively common font, then it is probably better to allocate the resources to something else and not protect the logo in the beginning. If the name of the product (or service) is non-distinctive (e.g. Booking.com), then the best way to proceed is to create a distinctive logo and protect that. If that’s the case, it may be possible to protect the name of the product or service later when it has been used extensively, like is the case with “Booking.com”.
Remember, whenever you use our service, we will advise you on what is the best option for you.