From Nike’s iconic “swoosh” to McDonald’s golden arches, a recognizable logo is perhaps a brand’s most critical piece of intellectual property (IP). Whether a brand sells sneakers or serves hamburgers, the logo serves as the face of the company and the products and services it offers.
According to statistics, Amazon will serve more than 180 million Prime customers in the U.S. alone by the end of 2024. An attention-grabbing logo is vital to e-commerce success because it grabs a user’s attention and stands out to millions of customers browsing thousands of brands. Equally important as creating the logo, however, is protecting it.
Understanding Trademarks
Trademarks are a form of IP that brands use to distinguish themselves from competitors. Typically, trademarks are granted to logos, slogans, and brand names. For example, the Nike “swoosh” logo and the company’s slogan, “Just do it, ” are protected by trademark law. As any brand should be, Nike is extremely diligent in protecting their trademarks.
Recently, Nike settled a trademark case against popular brand BAPE after accusing that company’s sneaker designs of violating its trademarks. While copyright laws protect the authors of original works from unauthorised use, they are limited to “tangible” works such as written materials, photographs, music, audio recordings, and art. Trademarks are the materials used to identify a brand or product. To be trademarked, these materials must be used to distinguish a brand or product from others easily.
Here, we will provide a step-by-step guide on how to apply for a trademark for your logo and other branding so you can protect one of your business’s most valuable assets.
First Steps Before Applying
The path towards registering a trademark in the U.S. starts with a basic search of the United States Patent and Trademark Office’s (USPTO) database to ensure your business name or logo is original and not already trademarked. For example, a simple search for “Nike” will provide a list of registered, pending, cancelled, and abandoned trademarks of the iconic sneaker brand. This initial research step must be conducted thoroughly so that all similar logos are flagged. Trademarks like yours should be examined thoroughly to ensure your work is distinct and qualifies for a trademark.
Trademark law has many nuances and complexities, making it challenging to navigate. Navigating complexities such as understanding design search codes—the identifiers assigned by the USPTO to categorise and identify specific visual elements within trademarks—is crucial for conducting a thorough trademark search. These intricacies in trademark registration signify why the USPTO and other experts strongly advise that brands hire an attorney to help them navigate the process successfully.
The USPTO would deny an application for a wide range of reasons. Some common reasons for rejection include similarity to existing trademarks, a lack of distinctiveness in the design, generic terms, or misleading imagery that would suggest the logo’s association with a person (such as a celebrity) or another brand. One example is a case filed by Harley-Davidson, a motorcycle brand, who accused another brand of alluding to theirs in a t-shirt design.
Beginning the Trademark Application Process
Since this next step can be incredibly time-consuming, preliminary steps are vital. Filing a trademark with the USPTO is not free and is subject to a fee of $250 USD per class of goods/service filed. The second option, TEAS Plus, is $350 USD.
The USPTO website can help you determine which option is best for your trademark. The primary difference between the two is the simplicity of the application process. TEAS Plus has a lower filing fee, but it is very stringent and challenging to navigate. Meanwhile, the TEAS Standard option has a higher filing fee but is more flexible.
It should be noted that these filing fees are non-refundable, providing all the more reason to hire an expert. Even the slightest error – whether you use TEAS Plus or Standard – on the application can see your trademark rejected. An attorney specialising in trademark law can draft a trademark description that is more likely to be approved.
Whether moving forward with an attorney or on your own, you will need to collect the following information for the application process:
• The Name, address, and personal details of the person or business filing for the trademark.
• The goods (s) and services(s) the logo will represent, along with the class of goods or services for which you’re registering the trademark. For example, the essential Nike logo trademark lists dozens of these goods and services. For example, some of the goods and services listed by Nike include “computer programs featuring footwear and footwear accessories” and “toys and toy accessories for use in virtual environments created for entertainment purposes.”
• A .JPG image file of the final version of the logo or design. This brings forward the question of whether or not you should trademark a colour or black and white logo. Colour logos will likely require a description of the colours, digital colour codes, and how they are used in the logo or design. Colour logos present another layer of complexity to the registration process as colour logos are only protected when displayed in those specific colours. When colours change, the trademark holder must amend the initial application or re-apply for a new trademark. Black and white logos, however, can be changed to colour without filing a new trademark application.
• A . JPG or .PDF file that shows an example of how the logo appears on the product or service.
Filing the Application
The application process can be completed online through the USPTO website, which will guide you through the application, examination, publication, and registration phases.
Following application submission, moving forward can take five to seven days.
The filing will be assigned an identification number and a government trademark attorney if the initial application is approved. The attorney will review the materials and conduct a clearance search to ensure no existing logos for similar goods or services that resemble the applicant. After passing through the trademark attorney, the logo will be approved for publication in the Official Gazette (OG), the USPTO’s official journal. If no one files an opposition to the trademark after it is published in the journal, it will be registered.
However, if the application has any issues, the examining attorney will send an office action to the applicant. The applicant must resolve any problems listed in the action within six months. Please do so to ensure the application is accepted.
Trademark Approval and Next Steps
Once the logo is registered with the USPTO, the owner will have exclusive rights to use the trademark within the approved goods or services class anywhere in the U.S. Once a trademark is registered, the owner can take legal action against any misuse. Regarding worldwide trademark protection, the Madrid Protocol – is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world. – can be used to file a trademark in the 131 World Intellectual Property Organization (WIPO) member countries. The WIPO was established by the United Nations in 1967 to ensure the protection of IP rights throughout UN member states.
The Bottom Line
Creating and protecting IP such as brand names, logos, and slogans is essential to launching and scaling a successful e-commerce brand. When a bad actor in the e-commerce space violates IP rights, a wide range of tools are available to stop misuse; however, securing trademarks and copyrights is an essential first step.
After trademarks are filed and approved, a comprehensive brand protection strategy with quick detection processes is necessary. GreyScout’s brand protection tools, coupled with the right approach, can protect trademarks, copyrights, patents, and other IPs.
