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How to Know When to Trademark Your Logo

I got a really great question from a reader in response to my first call for questions:

"I have a product that I want to market and have a name. I do not yet have a mark for this product but want to protect the name. Do I file intent to use and can I do that without having the actual mark?"

There's two distinct questions here – (1) the use of Intent-to-Use & (2) adding a logo after the fact.

(1) Intent-to-Use Trademark Applications: I will definitely dedicate a more detailed post to these two types of applications but to sum it up…

A mark, be it a name, logo or slogan, must be in use in at least 2 states OR between the US & any foreign country in order to obtain Federal trademark registration. However, an applicant can file the mark even if they're only doing business in one state OR not in business at all.

There is a hiccup in filing an Intent-to-Use application in that the USPTO is going to need to know that the mark is being sold across state lines or in another country. This requires another form, a $100 and a specimen.

(2) Adding a Logo to Your Trademark Application:

The USPTO is vague & clear about this matter in a way that really only the Federal government could be:

"The examining attorney will determine whether any proposed amendment of the mark is acceptable. A change is not acceptable if it materially alters the character of the mark. The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark."

Eh, what? Okay, so basically, if you intend to add anything at all to your trademark application AFTER it's been filed, it has to be something very, very slight. For instance, you may be able to delete generic or descriptive words from your filing.

But, of course, the USPTO has a caveat about that too: "For example, the deletion of the generic name of the goods or services would not generally constitute a material alteration, unless it was so integrated into the mark that the deletion would alter the commercial impression."

So, in a long winded way, it's probably not possible to add a logo to a pending application as the addition of the logo will more than likely "materially alter" the mark. But as with most trademark issues, it's recommended that you consult with a trademark company or attorney about your specifics.


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