Almost every business owner who calls me has both a name and a logo, a limited budget, and a reasonable question: which one do I protect first?
Why the order matters
A federal registration doesn’t cover “your brand” in some general sense. It covers a specific mark, used for specific goods or services. The mark you choose to register first will generally receive the additional benefits of federal registration first. But you may already have enforceable trademark rights in your name or logo based on how you use them in commerce — and for most businesses, those two things are not equally valuable.
Protect the thing your customers say out loud.
When a customer recommends you to a friend, they say your name. When someone searches for you, they type your name. When a competitor wants to trade on what you’ve built, the fastest way to do it is to use something close to your name. That is usually where the risk lives.
What a word mark actually gets you
When you register your business name as a standard character mark, the registration protects the wording without limiting it to a particular font, style, size, or color. That has a practical consequence most people don’t think about at the start:
- It survives your next rebrand. New colors, new typeface, new logo — the registration still covers the name.
- It reaches further. It can be asserted against someone using a confusingly similar name in a completely different visual treatment.
- It can be valuable in a cease-and-desist letter when another business uses a confusingly similar name, even if its logo looks different.
Logos, by contrast, change. I have watched more than one client register a design mark and then redesign the logo eighteen months later, which is an expensive way to learn this lesson.
When I’d file the logo first
There are real exceptions, and they usually look like one of these:
Your name is descriptive
If the name simply describes what you sell, it may be difficult or impossible to register on its own. A distinctive logo containing that name can sometimes be registrable when the bare words are not. But registering the logo does not necessarily give you exclusive rights to use the descriptive words on their own.
The logo is the brand
Some businesses are recognized by a symbol far more than by a name — think of any mark you could identify with the words removed. If that’s genuinely true of yours, the design is carrying the value.
Someone else already has the name
If the search turns up a conflict on the words, we may need a different plan entirely. That is exactly the sort of thing a comprehensive search is meant to surface before you spend money.
What if I want both?
If your budget allows, you may decide to apply to register both your business name and logo at the same time. If you need to choose one, your business name may be the better place to start. But every business is different, and the right decision depends on how you use your name and logo, your plans for your brand, and your budget. If you want separate registrations for your name and logo, each needs its own application and USPTO filing fee. You can also apply to register a mark combining the name and logo, but that is not the same as registering each separately.
And whichever we file, the search comes first. Two marks don’t have to be identical to conflict with each other, and finding that out after you’ve paid for packaging is a bad way to find out.
What to do next
Bring me the name, the logo if you have one, and a rough description of what you sell. You don’t need to arrive with any of it perfectly organized, and you don’t need to know the terminology. That’s what I’m here for.
This article is general information about trademark law, not legal advice, and reading it does not create an attorney-client relationship. Every matter is different.
