What Using Your Logo as a Trademark Looks Like
Clients are commonly perplexed by trademark registration. In this fictional example, let’s create an HVAC service company called ‘Rain or Shine HVAC Services’. The owner wants to protect the name and the sun-holding-an-umbrella logo. He also uses his logo on employee T-shirts, work trucks, and a variety of promotional materials to advertise his business.
He is concerned about the cost of trademark registration when we tell him that trademarks must be registered in connection with a specific good or service, each type of good or service is assigned a classification number and each classification requires a separate filing fee.
Trademark is a consumer protection area of the law. A trademark signals to a customer what company made the good or service they are buying, so the consumer can judge the qualities of the product (does Burger King mean something different than In-N-Out for hamburgers? Do you prefer Pepsi Cola to Coca Cola?). A customer may pick Rain or Shine HVAC Services because she wants to support local businesses over chains.
Many businesses and organizations use their logos on a lot of goods that aren’t their core business to help them advertise. For example, a restaurant may sell hats and T-shirts, or a bank gives away cups with their logo. These aren’t their core services, and when you see that T-shirt, you aren’t buying it because having the restaurant logo on it means it’s a high-quality T-shirt. When you see a van with the Rain or Shine HVAC Services logo, you don’t think the sun-holding-an-umbrella logo is to sell the work van.
Typically, a business is not using their logo as a trademark on these ancillary products. They don’t put the logo on T-shirts or vans or pens or fly swatters to advertise that they sell T-shirts or vans or pens or fly swatters. The logo in this case is NOT used as a trademark. So, we don’t register those as trademarks, we just use those for advertising.
If someone were to start a Rain and Shine Beachwear clothing line, consumers probably wouldn’t think Rain or Shine HVAC Services started a retail clothing store. There would be no confusion. Filing your trademark in connection with a specific good or service allows us to have Domino’s Pizza and Domino Sugar without confusing likely customers.
This is why most businesses are adequately protected by filing their trademarks in connection with their core business.