It’s springtime. According to my inbox, graphic designers consider this the best of times to “refresh” your logo.

Cool.

Before relegating the old, though, consider the trademark implications.

United States trademark registrations can be “standard character” — which means the registration covers words in the mark regardless of how they are depicted visually — or, they can be “design” registrations. That means the registration covers only the particular design as depicted in the original drawing file.

And US trademark registrations don’t last forever. Within the first six years, and every ten years thereafter, you must declare and demonstrate to the US Trademark Office that you are continuing to use the mark exactly as depicted in the registration for the described goods or services.

Do you see where this is going?

If you get all swept up in the glory of spring and randomly launch that new, refreshed logo — you won’t be able to keep your existing design registration alive. Why? Because your actual use will no longer match the design exactly as depicted in the registration.

So here’s what to do.

  1. Go ahead and work with your designer on a refreshed logo.
  2. But don’t plan on launching it tomorrow. First, ask your trademark lawyer to do a thorough search to make sure the new design will qualify at all for US trademark registration. (Heads up and totally different discussion: the logo might not qualify for copyright protection even if it does qualify for trademark protection; and if you do not have a compliant assignment agreement in place your designer will still own whatever copyright rights there are. Have this discussion, too, with your copyright/trademark lawyer.)
  3. If it seems likely the new logo will fly, submit an intent to use application for US trademark registration.
  4. Wait the nine months it’s going to take until your application gets examined.
  5. If, upon examination, it looks like you’ve got a clear path to registration, then start thinking about launching the new logo.

Happy spring!

 

 

BLOG CONTENT NOT LEGAL ADVICE