procedures for filing trademark application for business logo
Goodyear, AZ
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Posted 12 months ago in Trademark Application
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Business Logo Trademark:
I have a retail business in Arizona. We have a Trade Name Certification as well as a Certificate of Trademark for our corporate name. We have just developed a new logo to use with our Tradename in our printed advertising and website. Do I just need to update our Certificate of Trademark to include our new logo or does it need to be a seperate Trademark? Also do I need to do it as a US Trademark to protect us Nationally or does our state registration do that? As we offer a very unique service and our name/logo is a representation of that, I want to be fully protected throughout the United States.
Answers (3)Sean M. Sweeney
This attorney is licensed in Wisconsin.
Posted 12 months ago.
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I am not a Trademark attorney, but I have a basic understanding of how it works. More or less your Trademark only goes so far as your name recognition. So, while you can register your Trademark nationally, that does not mean that no one else can use that trademark. To show Trademark infringement you have to show a "likelihood of confusion". If no one has ever heard of your company outside of Goodyear, AZ, you cannot enforce that Trademark. While it may be a good idea to register it anyway, realize that it does not necessarily preclude others from using it.
Here is an example, Coca-Cola has a Trademark for the name and the script it uses, no one else in the USA can use Coca-Cola, or have a soft drink with that Script, because Coca-Cola could show there is a likelihood of confusion with its mark. However, if you own Joe's Auto Mechanic in Globe, AZ. You could register it nationally, but there are probably 1000 other Joe's Auto Mechanics throughout the country. The others are not precluding from using the name because you registered it. There is no way someone in New York City is going to think of your little shop in Globe when they hear the name, so there is no likelihood of confusion, and thus no actionable trademark infringement. Just some food for thought, you should probably talk to a qualified Trademark attorney in your state about it. Daniel Nathan Ballard
This attorney is licensed in California.
Posted 12 months ago.
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Sean's answer is a good one. I write only to add that if your new logo is different from your old logo then you cannot "update" your existing registration but should apply for a new one. I assume that you have already engaged in a reasonable investigation to determine if anyone else is already using your "new" logo, or one that is similar, within the United States. If not, you ought to hire a trademark attorney who will commission a trademark search company to do so (search cost is about $500) and to evaluate the results (for a "likelihood of confusion" as Sean notes). You should then have your attorney evaluate if your mark is used in interstate commerce and, if so, then he or she should apply to federally register your new logo as a trademark and, for good measure, with your state's Secretary of State as well. None of the above should be done by you -- it can be, of course, but creating and protecting your brand identity is so central to a successful business that cutting corners here is unwise.
Laura Mcfarland-Taylor
This attorney is licensed in Illinois.
Posted 9 months ago.
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The answers you received are good ones, but I only want to add that a state trademark registration does not protect you nationally. For that level of trademark protection you must file a trademark application with the USPTO.
If you do decide to proceed with a federal trademark application, please do not attempt to do it yourself. It is not as straightforward as many state trademark registration procedures. Good luck.
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