Q&A - Legal Problems RE Trademark of Company Logo?
By: FRANK RAPPA on Jun 26, 2012 08:16:05 AM
_____________________________________________________________________________ [QUESTION] Greetings Frank, My company is designing a logo for education and training program service we provide to our customers, will our company logo be approved for trademark protection? I have an artist designing our logo to have a stylized image of the word set above our company name “GLOBAL LEADERSHIP EDUCATION AND DEVELOPMENT” (written in a font sharing the same style and them of the glob.) I had an expert in IP Law say it may be difficult as the service provided is included in the logo. What are your thoughts? Regards, Taylor _____________________________________________________________________________ [ANSWER] Dear Taylor, To an extent your expert’s response is somewhat correct about "difficult[ies]" under the circumstances presented here. Let me explain the law as it applies to your company logo you described. First let me set out that a 'trademark' must be a 'distinctive' word, phrase, logo, graphic symbol, or other device (and any combination of these) used to identify the source of a product or service and to distinguish a manufacturer’s or merchant’s products from anyone else’s. 'Generics' (which are not ‘distinct’) cannot be protected under trademark. Thus, 'generic terms,' which describes an entire group or class of goods or services (for example, the terms “computer,” “eyeglasses,” and “eBook” are all generic terms), and the public associates these terms with a type of goods, not a specific brand. Here the G.L.E.A.D. logo, which contains the business name, is comprised of 'generic terms' that describe the service it labels. For example "Education" being a generic term here is clear, but the other terms also describe the underling service (But also "Leadership Education," " Global Leadership," " Global Leadership Education," "Leadership Development," " Global Leadership Development," "Education and Development," "Leadership Education and Development," and " Global Leadership Education and Development"). Your prior attorney stopping here was in error. The logo, while does contain 'generic words' remains 'distinct' when contained in the image with the globe in its particular design style, colors and the type of font used. What the logo is not is 'inherently distinctive' -- memorable because it is creative or out of the ordinary. Specifically, trademarks that are 'inherently distinctive' typically consist of unique logos or symbols or words that are made up to be specifically used as a mark, such as Exxon or Kodak (“coined marks”); words that invoke imaginative images in the context of their usage, such as Double Rainbow ice cream (“fanciful marks”); words that are surprising or unexpected in the context of their usage (“arbitrary marks”), such as Time magazine or Diesel for a bookstore; and words that cleverly connote qualities about the product or service without literally describing these qualities, such as "Slenderella" diet food products (“suggestive or evocative marks”). By contrast, marks that consist of common or ordinary words are not considered to be 'inherently distinctive.' Thus, to establish your logo as 'distinctive' with respect to your service you must establish that consumers recognize the logo as marking the services of G.L.E.A.D. through its long use. Typical examples of common or ordinary words are: people’s names; geographic terms (“Northern Dairy,” “Central Insect Control”); and 'descriptive terms' that is, words that attempt to literally describe the product or its characteristics (“Rapid Computers,” “Clarity Video Monitors,” “Ice Cold Ice Cream”). This process typically takes fives years of continued business use of the weaker mark, after such time the logo will be approved as 'distinctive' as a 'matter of law' and you will obtain full trademark protection (during the five year period after the trademark application has been submitted your logo is protected from others but some rights are not granted until the five years of use have passed. In my legal opinion, with the mentioned complications, you should be successful in getting the G.I.L.E.A.D. logo trademarked. Best of Luck, Frank Rappa _____________________________________________________________________________ 
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