Business owners create trademarks when they want to use a word, phrase, symbol or design to identify their business and distinguish it from every other business. Choosing a trademark is one of the most important aspects of marketing a business because of the power that a trademark gives you in establishing a brand identity. While the choice to use a specific logo, phrase or combination of the two is a business decision, companies may strengthen their marks by adhering to relevant trademark laws.
Basis of Trademark Protection
You acquire protection over a mark by either registering the mark with the proper agencies or using the mark in a manner consistent with the law. The registration system provides protection for marks that you are actually using, as well as those that you intend to use. Common law grants protection only over marks that you actually use in commerce. If you are using your phrase in commerce then you may have trademark rights to the phrase under common law, regardless if you have sought to register the mark.
If you registered the logo with the U.S. Patent and Trademark Office, the advantages that flow from registering the logo apply only to the logo as it appeared during the application process. If you add the phrase to the logo after registering the trademark, you are making a material change to the logo. iP Frontline magazine suggests that as a general principle to determine a material change, consider whether adding the element to the logo would cause the USPTO to conduct a new search of its database to determine if a likelihood of confusion exists.
Adding the symbol "TM" to your unregistered phrase provides notice to others that you are asserting trademark rights over the phrase. Adding the TM symbol is optional; you can prosecute an infringement claim even if you have not displayed the symbol near your phrase. If you have registered your logo, you have the right to place the symbol of a capital letter R within a circle near the logo to notify others that you have registered the mark. You should avoid placing the registered trademark symbol where it is likely to mislead others into believing that you have registered the phrase in addition to the logo.
If you did not register the phrase because it is merely descriptive, generic or otherwise does not fulfill the qualifications as a distinctive mark, you may still use it as part of your overall marketing campaign along with your logo. If you intend to assert trademark rights over a distinct phrase, under the common law or through registration, you may trademark the phrase independent of the logo. If you trademark the logo and the phrase separately, you are give yourself greater flexibility in the manner in which you can use both elements.