Things you should know before trademarking a logo
                     Things you should know before 
trademarking a logo
HERE, IN THIS BLOG WE WILL COME TO KNOW ABOUT 
THINGS YOU SHOULD KNOW BEFORE TRADEMARKING A 
LOGO AND ALSO THE REQUIREMENTS.
Things you should know before 
trademarking a logo
Chiefly, you have designed a logo to represent your business. Before 
sending that logo out into the market world, you should consider how 
to protect the design, and the business behind it, through correct use 
of trademark law. The changeover from concept to operation, from 
design to brand, is very crucial one.
A trademark is the one protects a word, slogan, image, logo or some 
combination that connects products with the maker of those products 
from being used by someone else. A trademark takes different shapes, 
as long as the mark you want to protect is distinctive.
The public must recognize the trademark as an identifier for the 
product‘s source. The perfect example of a trademark is the Nike 
swoosh symbol. When you see that mark on a pair of sneakers you 
immediately recognize those shoes as a Nike product.
Things that protects the 
trademarks
The main purpose of a trademark is to protect your brand identity in 
the marketplace and also build trust among the customers. To use 
another shoe company as an example, the Adidas trademark of 
three white stripes lets people know that the shoes they’re about to 
buy were designed and made by the Adidas Company. If a company 
actively selling shoes or things with two white stripes, people could 
easily think those shoes are Adidas shoes.
Consequently, not only does Adidas shoes lose money from the lost 
sale, but they also loss consumer confidence, if the similar looking 
shoes are lower in quality. The Trademark law states that your 
trademark is infringed by another company’s brand elements in 
order to confuse consumers. The companies that are infringing 
must stop using the similar trademark.
Who owns the logo 
trademark?    
Actually, Trademark ownership comes from those using the 
trademark for products in commerce. The logo designer will not be 
the trademark owner. The business owner who uses the trademark 
properly owns the trademark.
Your logo becomes a trademark when it appears on labels, 
packaging or the product itself and the public recognizes the 
company behind that particular combination of colours and shapes. 
Imagine you see a sign with golden arches; you probably are 
picturing a Happy Meal (also trademarked) or similar fast food item 
at a McDonald’s restaurant.
Things that you gain by 
registering your logo as a 
trIan Udnietedm Staters, ktrademark rights begin to come into existence 
when the trademark is put into commercial use. This means that, as 
soon as you start to advertise your product with your logo, your 
logo is technically trademarked in the eyes of the law. But these 
trademark rights are geographically limited and difficult to enforce. 
So even though, you don’t have to go to the worry of officially 
registering your trademark with the U.S. Patent and other 
Trademark Office, you might want to only registered trademarks:
 Are protected under the federal Anti-cyber-squatting Consumer 
Protection Act. This allows trademark owners to charge domain 
name registrants using identical or puzzling similar trademarks, 
things like Microsoft versus MikeRoweSoft.com
 Can ask the U.S. Customs and Border Protection to automatically 
confiscate counterfeit and infringing imported goods.
 Will make you to get trademark protection in other countries.
 Permit you to bring an infringement and also to claim in federal 
instead of state court.
 Award trademark owners presumptive ownership on a national 
level. That’s a fancy way of saying you are recognized as the 
owner of that trademark in the entire United States.
THINGS THAT QUALIFY YOUR 
LOGO FOR REGISTRATION
Though the Patent Office approves hundreds of thousands of things trademark 
applications annually, not all trademarks are eligible for registration. 
Trademarks cannot be an offensive or misleading one. For example, the 
Applications for trademarks that are made similar to existing ones will be denied 
unless the products are completely unrelated, as in the case of things like Apple 
Computers and Apple Corps, the highest company owned by the Beatles. 
Trademarks that sound alike, mean the same or are visually similar to each 
other are likely to cause confusion among consumers and it cannot be 
registered.
You can start the process of trademarking a logo as soon as possible, by 
submitting an intent-to-use application before you start your business or 
product launches. The trademark cannot be officially be registered until the 
Patent Office completes its review and approval of an application.
THE STRONGEST 
TRADEMARKS THINGS
 The point of a trademark is to distinguish your product from the 
other competitors in the market. Therefore the trademark must 
be unique and distinctive. Trademarks are distinguished from 
weak to strong, with the strongest being the most easily 
protected by law because they are distinct in the minds of the 
public and are readily distinguishable in the market.
 The strongest things tend to be spectacular or arbitrary.  Generic 
words or logos can’t be trademarked. For example, if you open a 
pizza restaurant and name it The Pizza Place, you’ll probably 
have a harder time trademarking your name than if you name it 
Tricycle Pizza.
Why you cannot register your 
logo as a trademark?
There are many reasons why you might choose not to pursue 
trademark registration, depending on your current and anticipated circumstances:
 You are not sure how long your business will last. Applying for trademark 
registration is time intensive process, the average time taken will be 10 months 
to complete the process. The application is expensive, too, with a minimum 
filing fee of $325 if you prepare and submit the most basic application without 
legal counsel.
 Your logo must change in a couple of years. Only the exact version that is 
registered is legally protected, and you could actually weaken the registered 
trademark’s rights by using variations. Also, logo that are registered as 
trademarks must continue to be used in order to retain their rights. If you don’t 
use your logo then there might not be a reason to register.
 Your logo cannot be registered if it is similar to another already in existence 
somewhere else in the country.
Who can apply for Trademark?
Any individual can apply for trademark registration to the 
Trademark Registry under the jurisdiction   of the business place of 
the applicant in India falls. In case of a company about that are be 
formed, anyone can apply in his/her name for succeeding 
assignment of the registration in the company’s favour
Requirements for filing 
Trademark application:
 Name of the activity or Firm name, Company name.
 Name of the proprietor or the name of the partners
 Address of the Business Place
 20 Labels of trade mark logo in visiting card size or lettering style or device
 Description of goods to which the mark is applicable
 Date of the first use of trade mark, if the mark is already in use.  The application 
must be filed as ‘proposed to be used’
 Through this you can  also verify from your first invoice
 If the product is for medicinal preparation, then you should verify from the Drug Endorsement made for 
the particular product in your drug license.
 Authorization Form on Form TM-48 in stamp paper and s to be signed by the authorized 
signatory in case if the applicant wants to engage the services of a Trademark Attorney.
 If it is a Private Ltd Company or a Public Limited Company, things like furnish the 
Memorandum and Articles of Association.
Stages involved in trademark 
registration
1. Allotment of application number
Upon receipt of an application for registration, a serial number is allotted 
to the same, which is used as a reference number for application. Same 
number is used as Trademark Registration Number if the mark is 
registered.
2. Preliminary Examination Report
The Registry examines the application and sends a Preliminary 
Examination Report (“PER”) together with Formalities Check Report (“FCR”) 
to the applicant wherein the Registrar would call upon the applicant to 
remedy the deficiencies and departmental objections. The applicant has to 
reply to the PER and FCR within a period of one month.
3. HEARING
If the Registrar is not satisfied with the application and reply to PER, 
he may call the applicant for the hearing if the applicant in his reply 
requested for the same. If the Registrar is satisfied in the hearing he 
would order advertisement.
4. ADVERTISEMENT IN TRADEMARK JOURNAL
Upon acceptance of the application the Registrar should cause the 
application with the conditions and limitations, if any, to be 
advertised in the trademark journal as accepted.
5. OBJECTIONS, HEARING AND REGISTRATION
Any person within 3 months from the date of advertisement or re-advertisement 
may in prescribed manner (Form TM 5) oppose the registration by paying 
prescribed fees; i.e.,2,500/-. The applicant shall file things like counter statement 
in prescribed manner (Form TM 6) by paying prescribed fees; i.e.,1,000/-. Any 
party desirous of hearing must file application in prescribed manner (Form TM 7) 
by filing prescribed fees; i.e.,500/-.
The Registrar after considering the written averments and after hearing, if any, 
decides as to the claims of the applicant and the opponent and thereafter if 
decision is in favour of the applicant, registers the trademark. Upon registration 
of the trademark, the Registrar shall issue registration certificate in prescribed 
form. Registration of the trademark shall be effective from the date of the 
application and shall be in force for the period of ten years from such date. In 
case any party to the opposition proceedings is aggrieved by the order of the 
Registrar, it may file an appeal against the same with the Tribunal.
Grounds of refusal
Section 9 provides the absolute grounds for refusal of registration of 
any mark and section 11 provides for the relative grounds for refusal 
of registration. The rejection order is generally for the reason of 
attracting provisions of either section 9 or section 11.
DURATION OF A TRADEMARK
The term of a trademark registration is for a period of 10 years. The 
renewal is possible only at a period of 10 years each. Unlike patents, 
copyrights or industrial design, trademark rights can last forever, if 
the owner continues to use the Trademark.
REMEDIES FOR 
INFRINGEMENT AND PASSING-
OFTwoF types of remedies are available to the owner of a trademark for 
unauthorized use of his/her mark or its imitation by a third party. These 
remedies are: One is ‘action for infringement’ in case of a registered 
trademark and another one is ‘an action for passing off’ in the case of 
an unregistered trademark.
 The basic difference between these things are an action for 
infringement and an action for passing off is that the former is a legal 
remedy and the latter is a common law remedy. In order to establish 
infringement regarding to a registered trademark, it is necessary only to 
establish that the infringing mark is identical or similar to the registered 
mark and further no proof is required. In the case of a passing off action, 
proving that the marks are identical or similar alone is not sufficient. 
The use of the trademark likely to deceive or cause confusion.
International Trademark 
Protection
There is no system wherein a single trademark application is 
sufficient to protect the trademark right internationally.
Moreover, it is possible to apply for multinational filing systems in 
certain regions in order to obtain trademark protection. For 
example, major countries like Belgium, Netherlands and 
Luxembourg have a single trademark registry, commonly referred 
as the Benelux Trademark Register.