Only one mark per application
It should come as no surprise that one trademark application can cover only one mark. In other words, you may not register multiple trademarks in a single application. What may be more tricky to discern is whether a logo contains multiple marks. Let’s discuss the trademark examination rules that provide some guidelines on whether we’re dealing with a single trademark or multiple marks.
Does your logo contain two or more trademarks?
This issues arises primarily in design marks (i.e., logos) since word marks with standard characters omit any graphical design, orientation and peculiar spacing. So how can we tell if a design mark might possibly contain multiple marks that would violate the one mark per application rule?
TMEP 807.01 provides helpful guidance. A single projects a unitary commercial impression. When a drawing of a mark contains spatially separate elements, the USPTO trademark examining attorney may question whether the application is seeking to register more than one mark. If so, the trademark application will be rejected. Amending a drawing to remove a portion of the original logo may prove difficult since such a drawing amendment carries the risk of materially altering the original mark.
When can an application potentially contain multiple trademarks?
If you are thinking about filing a single application for a logo that has the potential of being regarded as multiple trademarks, one practical factor to consider is the spacing between the elements in the drawing. Is there a bit too much spatial separation?
Another factor would be the possibility that certain elements in the drawing each create a distinct commercial impression. For example, is a first group of terms with a first graphic image being combined with a second group of terms and a second graphic image?
If you have a combination of a graphical image and wording, consider whether the graphical image would ever be used by the trademark owner apart from any wording. If so, it may be worthwhile to file a trademark application for the graphical image alone and a separate application for the wording in standard characters (i.e., no logo).
At the end of the day, it will be a judgment call for the USPTO trademark examining attorney assigned to your application. Amending the drawing might be an option if the proposed amendment does not materially alter the mark. The problem, however, is arguing how changing a 2-mark drawing to a single mark drawing would not be a material alteration.
We generally like to err on the side of caution. If there is a risk that multiple marks may be seen in a logo, then consider other options, such as filing for each mark separately.
Want to file a trademark application the right way?
Contact US patent and trademark attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you file a proper trademark application that will save time and money.
