Has your logo evolved over the years? You may have lost protection
The golden rule when we advise our customers is “register your trademark exactly as you will use it”. If in some cases you will only use the words without the design portion or vice versa, register these separately. If you will use your trademark in different ways, register each of these versions as separate trademarks; even if you consider them similar or nearly identical, these should be individually protected.
As your business grows and evolves, it's natural for your branding to change along with it. Many of our customers find themselves updating their logos to reflect new marketing strategies, modernise their image, or appeal to changing consumer preferences. While this evolution is often necessary and beneficial, it can inadvertently put your trademark protection at risk.
However, what happens when you update your logo but you still only have the old combined mark registered?
The risk of losing trademark protection when a logo is updated
If your current logo differs significantly from the one you originally registered, you may find that your new design is not fully protected under your existing trademark registration. This discrepancy can weaken your legal position if you ever need to defend your brand against infringement.
In addition, if you are not using your trademark as it was registered originally, your registration could become vulnerable to cancellation due to lack of use - whether because you will not be able to comply with the requirements for filing declarations of use, or in case someone files a cancellation action against your trademark.
To ensure continuous protection, it's crucial to update your trademark registration whenever you make significant changes to your logo. This process involves filing a new application that reflects your current branding.
Some of our clients choose to register their logo as a separate application from their wordmark. This strategy can offer several benefits:
- It allows for greater flexibility in updating visual elements without affecting the protection of the wordmark.
- It can provide broader overall protection for your brand identity.
- It simplifies the process of updating logo registrations as your branding evolves.
Planning ahead: registering your new logo
While updating your logo registration is advisable, it's also important to understand the concept of combined trademark protection. When you register a trademark that includes both a wordmark and a logo (known as a combined mark), you gain certain protections even if you only use part of the mark in practice. If you have registered a combined word and logo mark, you may still have some protection for the wordmark element even if you're not using the exact logo from the registration. This is because trademark offices and courts recognize that the distinctive character of a mark often lies primarily in its word elements.
Therefore, while this aspect of trademark law provides some flexibility, it doesn't negate the importance of keeping your registrations up-to-date with your current branding. For optimal protection, it's always best to have registrations that precisely match the marks you're using in the marketplace.
If you're considering updating your logo in the near future, it's wise to start the registration process early. However, consider that in some countries you need to use these in the market.
Declaration of use and proof of use requirements
In certain jurisdictions, particularly the United States, trademark applicants must provide a Declaration of Use and a Specimen of Use to complete the registration process or maintain an existing registration. This requirement can present challenges when registering a new logo that you haven't yet started using in commerce.
In some jurisdictions trademark rights are intrinsically linked to the actual use of the mark in commerce. This principle is particularly emphasized in certain countries through Declarations of Use and Specimens of Use.
How iGERENT manages your portfolio
We take the complexity out of trademark maintenance. Our expert team handles all aspects of protecting your evolving brand, including:
- Preparing and filing Declarations of Use
- Compiling appropriate Specimens of Use
- Managing timely filings across all relevant jurisdictions
- Ensuring international compliance with varying requirements
- Providing strategic advice for logo updates
We maintain a proactive schedule to prevent non-compliance and potential trademark cancellation. By entrusting your trademark portfolio to us you can focus on growing your business, confident that your IP is in expert hands.
Your brand's future is important to us. Let's work together to keep it secure.
