Trademark registration is a strategy game.
You’ve been in business for a while and you know you need to register your trademarks. Problem is, you’re not sure which one to do first. Apart from the obvious choice - the name of your brand - you also have a logo, various slogans, product lines, and the title of your podcast and online course. You’re not sure which trademark is most important to protect first.
While there is no one-size fits all, today I want to talk about a common problem for business owners. Let’s say that your business prominently features a logo in all of your marketing copy. Trademark registration isn’t cheap, so while you’d love to register all of your trademarks at once, you find yourself in a situation where you have to prioritize. You figure that your logo is the most recognizable aspect of your branding, so you decide to register the logo first, and wait to register your brand name later.
Sound familiar? Read on.
Once Upon a Time in New York
The year was 2010. Simone Kelly-Brown, a motivational speaker, life coach, and business coach, had just incorporated her company, Own Your Power, Inc. She had been using the phrase “own your power” in workshops and seminars since 2004 and had registered her trademark in 2008. The trademark was a design mark that protected her distinctive light blue, scripted lettering of the phrase.
That same year, Oprah Winfrey used the phrase “Own Your Power” on the cover of the October issue of her magazine. She used it again inside of the December issue, for the title of her “Own Your Power” event, on her TV show, on social media, and on affiliated websites.
Kelly-Brown noticed her trademark being used and sued for trademark infringement, presumably assuming that the trademark registration would protect her.
But it didn’t.
And that brings us to a quirky aspect of trademark law.
The Problem with Only Registering a Design Mark
There are two types of trademarks: design marks and work marks. A design mark protects stylistic aspects of branding such as logos. Word marks protect actual words and phrases. So what happens when a logo design also includes words?
It doesn’t matter. It’s still a design mark which means only the design is protected. This is where Kelly-Brown went wrong.
Design marks only protect words, names, or phrases if someone else is copying the actual design. If someone else is using the same words, but not using the same design, a design trademark will not stop them.
Kelly-Brown lost her case because her design mark only protected the phrase “Own Your Power” in “light blue scripted letters”. Oprah was using a different font, color, and design, so the court ruled in Oprah’s favor.
So what does this mean for business owners who want to protect their trademarks? The key takeaway here is that registering a word mark - just the words themselves - can provide more protection than just registering a logo/design mark. This is because a word mark protects the words regardless of the font, color, or design.
Hopefully your small business will never need to go up against someone as big as Oprah. But if you do, a strategically registered trademark (emphasis on the word strategically) goes a long way!
Thanks for reading the Bevel Law Blog! While this information is hopefully helpful to you, nothing in this blog is intended to be legal advice. Always consult a lawyer before making any legal decisions based on topics in this blog.
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