You hemmed and hawed and Googled and thesaurus.com-ed and surveyed your family and friends. And after all of that, you picked a brand name for your business and your food product(s). Your next step was probably to find a graphic designer to help you create a logo to go along with your brand new name. So now you have a name and a logo, and probably some labels and/or packaging. You've heard you should probably protect some of these things (aka, your "intellectual property"). But with a limited budget, what should you spend to protect, and how should you prioritize?
Brand Name Comes First, Logo Comes Second (Usually)
One question I hear a lot is, "Should I trademark my logo?" The short answer is: Only after you trademark your brand name. With limited dollars, you should almost always try to trademark your brand name first BEFORE you spend money trying to trademark your logo. Of course, there are exceptions to every rule. I'll discuss those at the end.
Also, you can scroll to the end for the TL;DR version of this post and for a free trademark resource.
In A Perfect World, Protect Everything
In a perfect world, you would have plenty of money to pay an experienced trademark lawyer to:
- Investigate the trademark options for a bunch of POTENTIAL brand names and logos, BEFORE you picked one for your business.
- Conduct a thorough trademark search for your newly-picked brand name.
- Help you strategically select the Class or Classes you need for your trademark.
- Carefully draft your description of goods and services.
- File your trademark application with the U.S. Patent and Trademark Office (PTO).
- Ditto 2 - 5 for your new logo.
- Monitor your trademark applications on the PTO website.
- Respond on your behalf to issues the PTO might raise regarding your trademark applications (called Office Actions), including making complex arguments if the PTO initially refuses your application.
- Deal with anyone who comes out of the woodwork to oppose your applications (usually people or businesses who own the rights to similar trademarks).
- Etc. Etc. Etc. for product names, taglines, and anything else you think might be protectable.
Oh, and you also have plenty of dough to cover the PTO's $225 - $400 filing fee per mark, per Class (you might want protection for the same mark in more than one class). This can add up fast. Two marks, in two classes each can run you $900 - $1,600 in filing fees alone. That doesn't include money for lawyer time.
At this point, your eyes have probably glazed over because this perfect world scenario doesn't apply to you. This is what the Big Food companies can do (and do do). You probably can't. So what *should* you do?
Prioritize, Prioritize, Prioritize
Michael Adams, owner of Green Mountain Mustard and author of the Gredio blog for food entrepreneurs, puts it very well in an epic trademark saga post. You should read the whole thing, but here's what he had to say about prioritizing trademark protection for your food business:
What can you protect? While I thought I’d protect everything under the sun, it just doesn’t make sense financially. I don’t have $25,000 laying around. You might, but I’m sure you could think of a million better things to do with the money. But, legal protection should be on the list because there’s a lot to protect.
• Your company name
• Your company logo
• Unique product names
• Slogans and taglines
• Unique packaging (limited, but possible)
• Made-up words (those are fun, but I don’t have any)
Now, you obviously don’t have to protect everything. I mean, money doesn’t grow on trees.
Good Advice: Brand Name First
Michael's lawyer gave him the same advice I give all my clients, which is that you should almost always make protecting your brand name (which may also be the same as your business name) first priority.
What should you protect first? I was advised to protect my company name first. Seeing as it’s plastered all over everything – labels, cards, banners, etc. I’d never want anyone else to use Green Mountain Mustard.”
I was advised not to protect my logo – the visual part. Nothing terribly unique to warrant protection from imposters.
Also, if you can achieve trademark protection for your brand name, the scope of your trademark rights are far broader than the narrower scope of rights you get with a logo. This means more bang for your trademark buck. For example, Michael has the rights to stop other people from using the phrase "GREEN MOUNTAIN MUSTARD" in any size, font, color, or design you can imagine. Here's how that mark (called a "word mark") looks on the PTO's register:
In contrast, getting the trademark rights to a logo (technically called a "design mark") just gives you the rights to stop other people from using a logo that is too similar to your logo, like Michael's below. That's less bang for your buck.
Also, consider that your logo is much more likely to change over time than your brand name. Re-branding happens all the time; logos are updated, packaging changes. Logos are especially likely to be refined as you scale up and if you are purchased by a larger company. So investing in protection for the very first iteration of your logo might end up being a waste of valuable startup dollars.
So, When Should I Spend $$$ To Trademark My Logo?
If your logo is exceptional, interesting, unique, and highly associated with your brand (meaning customers will see the logo and actually associate it with your product, even if the logo doesn't include your brand name) then go ahead and trademark it right away if you can.
If not, take Michael's advice that he followed for Green Mountain Mustard:
Do you really need to protect your logo? Yes, if you have a distinguishable brand-mark. If it’s just text and a couple lines – or clip art you found online – don’t bother. It’s a waste of money.
Another situation where you might want to consider trademark protection for your brand name is when your logo doesn't actually include your brand name. A good example is the brand name and logo for one of my other businesses, a fantasy sports tech startup called Starting 11.
Taking my own advice, I first applied to protect the word mark: STARTING 11.
Later, having scored some additional cash, and realizing that 1) our kick-ass logo (design mark) would be all over our mobile daily fantasy app, 2) our logo didn't include our Starting 11 brand name, 3) users of our fantasy soccer app would likely associate the logo with our business even if they forgot our brand name, and 4) the logo was just super cool, I applied to protect our logo.
I think this was a good use of Starting 11's limited startup budget, for all the reasons listed above. But remember, I gave first priority to trademarking our brand name, and you probably should too.
One other exception to the general brand-name-first rule is if your lawyer tells you that your brand name is too close to an existing trademark, especially if that mark is owned by a company big enough to take their trademark protection seriously. (Think PepsiCo, Kraft, etc.) If that's the case, and you are worried about triggering a trademark dispute with a big fish, you could consider applying for the narrower protection associated with your logo. That narrower approach still helps protect your business assets, but can sometimes help avoid a trademark fight.
Your Takeaways And A Free Trademark Resource
- On your limited budget, prioritize trademark protection for your brand name. You get more bang for your buck that way.
- If you have the cash, it's probably a good idea to trademark your logo if:
- You don't anticipate it changing any time soon.
- It doesn't include your brand name.
- It is unique and highly associated with your brand.
If you are interested in trademarking your logo, you can search the PTO database for images and see if there is anything out there that is similar to your logo. It's always a good idea to start a trademark search for yourself. However, before you apply for a mark it's generally worth it to have an experienced trademark lawyer help you with the search and your trademark strategy. Your lawyer can help you figure out:
- What mark or marks to apply for given the universe of similar marks already registered;
- What class or classes to apply for;
- How to describe your goods or services;
- Whether to apply for an intent-to-use or use-in-commerce mark; and
- How to not screw up your application by making a technical error.
Don't take my word for it. Take it from fellow food entrepreneur Michael:
You can do this yourself. However, to make sure it’s done correctly, I’d advise partnering with a trusted law firm that specializes in intellectual property law. The process is rather simple to file copyrights and trademarks – just a couple pages – but there’s a reason people go to law school to do it right.
And about that free resource. If you'd like to learn more about trademark basics for food companies, I'll send you the slides from a Good Food Workshop my law firm created called "Building and Protecting Your Brand." You'll get the slides for free, and you'll get a great overview of the whole trademark process.
Just click here and type "Please send me the trademark slides" into the message field.
Bonus resource: You can listen to me talk trademarks and food truck law on the Food Revolt podcast.
Go forth and trademark! (But be smart about it.)