Selecting the perfect business name is a difficult process, and there’s nothing more demotivating than learning someone else has already registered your chosen name. Once you’ve found a name that is available and appropriate for your use, it’s a good idea to protect that name (and the logo graphic) so that your company is the only one that can use it. That’s what trademarks are for.
Trademarks fall into the scope of legal practice. I’m not a lawyer but a graphic designer, so nothing I’m presenting here should be taken as legal advice. I will share some general tips so you’re more informed about the next steps you need to take.
The purpose of a trademark
Trademarks are a type of intellectual property (IP), along with copyright and patents. A trademark can be owned by an individual person or by an organization.
If a company owns a trademark for let’s say the word “Owls” in the category of educational products in a certain country, this means that this company is the only one that is allowed to use this name in relation to educational products. No other company may use this, or a similar name in a way that may confuse or mislead consumers about which company they’re dealing with.
There are two types of trademarks: verbal trademark which cover the company and/or product name written in letters and figurative trademark which protects the logo graphic. A figurative trademark can be the logo mark (symbol) alone, or a combination of images and words.
Ideally, you would want to protect both types of trademark for your company so that no one can use a name that’s too similar to yours, or a logo design that’s too similar to yours. If you only protect one of them, then someone can still infringe upon the other, and you won’t be able to do anything about it.
Trademarks are protected within the class (category) of products or services you sell. You can’t register a blanket trademark across all the different classes (that would be too expensive). If someone decides to use a similar name in an industry that’s completely different to yours, they can do that because there is very little potential for confusion among customers.
If someone infringes upon your trademark—ie. uses a similar name or a logo—you have a right to send them a cease and desist letter to ask them to stop it, and if they don’t comply you can sue them for damages. Having the paperwork that proves you own the intellectual property makes it easy to prove in court that you are right. If you haven’t registered a trademark, this may not be possible.
Unlike copyright protection which in some countries has a duration of 70 years after the death of the original author of the work, trademarks expire more quickly, and need to be renewed every 5–10 years so that the protection remains in place. Trademarks which have expired may later be claimed by another business.
Trademarks are only protected in the country where you’ve registered them. If you register them at the USPTO, they’re only protected within the United States. If you register them in Croatia, they’re only protected in Croatia. You can register your trademark in any country where you intend doing business, but this will increase the cost of registration and maintenance.
Do you really need a trademark?
If you want to ensure that no other business or individual is able to use a name or a logo that’s too similar to yours and potentially mislead your customers, you need to register a trademark.
If you’re a small local business and not too worried about customers being confused, a trademark may not be a worthwhile investment. However, be careful because another company may register the same name you’re using as a trademark in your country and force you to change yours. Even though you may have been using the name for longer, if their trademark application is accepted, you’re screwed.
I’m using my own personal name as my business name, and I don’t think anyone is silly enough to go apply to use my personal name as their trademark just to spite me, so I didn’t do it. But if I were using an invented name for my own business, I’d definitely pay to have it protected.
Who is responsible for checking and registering trademarks?
The business who owns the trademark is responsible for all actions and costs associated with checking, registering, maintaining, and protecting the trademark.
It is not the designer’s or brand strategist’s job to handle trademarks for you. We (branding professionals) operate under the assumption that the name you’ve given us to work with has passed the trademark checks and is clear for use. Some of us who are a bit more diligent may perform checks ourselves and warn you that there’s a trademark conflict, but you should always check it for yourself before you commit to using the name.
Since trademarks are a specialized practice, you will possibly require the help of a trademark lawyer to handle the application paperwork. You can, however, perform the basic trademark database checks yourself, and I’ll show you how in a bit.
Renowned branding agencies that work with large corporations are often partnered with trademark lawyers who are performing the checks and submitting registrations on the agency’s and client’s behalf. These types of agencies charge higher, all-inclusive fees, so the client doesn’t have to worry about anything. You should not assume that all designers and agencies do that.
If it’s not clear from the agreement you sign with your designer or agency who is responsible for handling the trademarks, ask them. But 99% of the time it is you (the client) that is responsible, so you will need to work with a lawyer directly.
If you hire a branding strategist or a copywriter to invent a new company or product name for your business, they will check if the trademark is available in countries you specified, but you will still need to submit the paperwork and pay fees to register it.
How much does this cost?
It depends on the country:
- To register a trademark in European Union, a fee for applying in one class is €850, the second class another €50, and for each additional class another €150 (source: EUIPO).
- In the United States, the cost of the federal filing (across the entire United States) is $275–$400 per category, plus legal fees. Read this article for more information. Registering only within a state or a city is much cheaper.
- In Croatia, the cost to apply for and register one trademark in up to three classes is 2.250 KN, and for each additional class the fee increases by 450 KN (source).
- World-wide trademark registration uses the WIPO Madrid International Trademark System. I calculated hypothetical costs for a trademark in one class across 106 countries and that would cost 20.875 CHF, which is about 20.000 EUR.
As I’ve mentioned, verbal trademark (name) and figurative trademark (logo) are treated as two separate trademarks. If you want to register both, it will likely double those fees.
If you decide to let a legal representative handle your paperwork, this will increase the cost since you’re also paying for their services.
Renewing a trademark, which you typically need to do every 10 years, costs about the same as registering a new trademark.
Check and register a trademark for your business name before you hire a logo designer
I had a couple of clients over the years who decided to change the name of their business in the middle of the logo design process, or when the logo was already done. The first time it happened, it was because of a trademark conflict. I was not as experienced back then, and when the client came with a different name I changed all the logo graphics (dozens of them in different color variations and compositions) and didn’t charge them anything for that additional work that I wasn’t even supposed to be doing had they checked beforehand.
The other time a client of mine decided to change the organization name after I had already designed the logo, I charged them an additional design revision fee. I advise all designers to do so. It’s not our fault the client hasn’t done their homework, and we shouldn’t be shouldering the cost.
Even if you change the name for reasons that are not trademark-related, the designer should still charge an additional fee. The words in the logo change the design tremendously—it’s not just a matter of replacing one word with another. The whole design will be thrown off balance by this change, and fixing that involves a lot more work.
In order to avoid these extra costs, check your name against the trademark databases in your area to ensure you’d be the only one using this name.
Where to find the trademark databases?
Each country has their own government agency that handles trademark registration. Many of them have an online public database of registered trademarks that you can search by yourself. In addition to agencies within individual member countries, the European Union has a central IP agency where you can register a trademark in multiple countries at the same time.
If your country is not on this list I’ve provided, just search for “[Country Name] trademark search” (in your local language) to find out which government body handles trademark registration, and how to check and register trademarks on their website.
Registering the logo graphic as a figurative trademark
Like the name, the logo should appear unique within a business class to be considered for registration. You can’t use an apple graphic within the computer hardware and software industry in most countries, but you could use it for a dentist’s office or health coaching services, as long as there is no other company who has already registered theirs in this category.
Ideally, your designer should check for themselves whether the logo they designed for you is sufficiently unique within a category, so that your trademark application is likely to be accepted.
Some trademark databases have the option of visual image search where you can upload an image and find potential matches. Those matches are automated and may not actually reflect what a human would deem as “similar”, so use your own judgement. Better yet, if you’ve already worked with a trademark lawyer who registered your business name as a verbal trademark, they can help you determine how likely your logo is to be considered unique because they have experience in this area.
While the designer can not be liable for damages if another company sues you, the expectation is that every designer will do their best to create a unique logo that will not get their client in trouble. Sometimes it’s really hard to create a logo that is 100% unique (especially if it’s based on letters or common shapes) and it’s impossible to know about every similar logo out there so honest mistakes can happen.
In case your logo fails the trademark application because a similar logo in this category already exists in your country, I’d recommend that the designer creates another logo revision at no additional cost which will pass the check of your local IP office because this was a mistake on their part. But you can’t expect that your trademark application will pass in every country of the world, because no one has the resources to check all the potential trademark conflicts world-wide. If you plan on registering the trademark in a country other than the one where your business is situated, let the designer know so they can perform checks as they’re working on your logo design.
If you have proof that your designer has copied another design, you should not be expected to pay for that. I’ve provided some tips on how to protect yourself from unethical logo designers in this article.
- Names and logos can be legally protected so that other businesses in your niche and country are not allowed to use them. This ensures that your brand is easily distinguished from your competitors.
- Business owner is also the trademark owner, and thus responsible for handling the paperwork and fees.
- If you hire an agency to invent a new name for your business or design a logo, they are expected to check that the name or design they propose doesn’t infringe on an existing trademark in your territory.
- Trademarks can be registered worldwide, but it’s quite expensive.
- If your business is small and local with no expansion plans, you may not need a trademark. However if another company registers the trademark, they might force you to change your business name. Evaluate how likely that is to happen in your country. (Not very likely in Croatia, possibly quite likely in the United States.)
Need a unique logo for your business?
My clients have successfully registered their new logos as trademarks in the past. My specialty is coming up with unique graphic symbols that communicate your brand message and core values. If this is something you might need in the near future, check out my services and let me know if you’d like to chat about working together.