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A Strategy to Consider in Registering Trademarks on a Budget

A trademark owner wants to register two trademarks: a word mark, and a logo. But it only has a budget for one. Which one should it register?

The word mark, almost every time.

Getting a word mark registered will protect against confusingly similar uses of the word in all stylized and unstylized forms. In other words, if you register TRADEMARK in connection with bobsleds, you can probably enforce your rights against a seller who uses TRADEMURK in connection with sleds, saucers, and skis — regardless of how fanciful and different that seller’s depiction of its mark contrasts with yours.

That might not be the case if you instead register TRADEMARK as part of a red and green logo with lightning bolts emanating from the letters. In that case, a court could compare that form of TRADEMARK with a stylized form of TRADEMURK that’s orange and blue, surrounded by pink polka dots. Now, the similarities in the way the marks sound still make the marks at least somewhat similar — and the goods are still similar — but the striking difference in the marks’ visual appearance prevents it from being the slam-dunk case for confusing similarity that exists when you enforce your rights in the word mark alone.

If you have a logo that doesn’t contain your house mark — like Nike’s “Swoosh” — you need to protect that apart from your go-to word mark. Protection doesn’t require registration, but getting your mark registered (either at the state or federal level) gives you expanded rights that make it easier to keep copycats at bay.

Everyone’s on a budget. Being strategic in how you spend your marketing dollars in registering trademarks is a smart step in the right direction.

Posted on November 7, 2011 by Registered CommenterMichael Atkins in | CommentsPost a Comment

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