World Wide Famous, and the strength that it provides internationally, can be achieved through consistency in filing trademarks worldwide.

Trademark filing seems simple on the surface, and indeed for a brand that will never expand outside its own country’s borders, it can be very simple. However, for any brand that dreams of future international growth, the first trademark registration becomes the basis for all future international registrations and can determine the strength of your brand worldwide.

From the first filing, which should be in your home country, all future trademark registrations must consistently maintain the salient details of the originally registered trademark.

There are only a few key elements to trademark registration in most countries around the world:

  • The Owner
  • The Product
  • The Trademark (words only, stylized lettering or a design)
  • The Date of First Use (only in some countries)
Ownership of the trademark is probably the most important.

If Company A registers a trademark in 2006 in Country A, but registers the same trademark in Country B, under Company B, then no World Wide Famous rights have been established because there are two different owners. In most countries, there would be no shared trademark rights, not even if a relationship can be proven to exist between the two companies.

In the above scenario of two different owners for the same trademark in two different countries, a trademark assignment (transfer) of ownership will probably be necessary, which of course increases your trademark’s costs. And while a trademark assignment transfers the rights, that trademark might never have the full strength it would have had if filed consistently from the beginning.

Every brand and every company has unique goals and requires a unique strategy.   The above is meant only to be general information and may not apply to your brand needs or to every country.

With a simple answer. No. In lack of a clear cut reason to file WITH logo, then word/logo trademarks should be filed as words only.

Unless the logo is going to be used alone (without words) to represent the brand, like the Pierre Jouet flowers or the Dom Perignon shield, then words only make more sense long term because the odds are that your logo will change.

It is very common for a word/logo combination trademark registration to find itself 3/5/10 years later (at renewal time) using a different version of the word/logo combo.

In most countries, failure to use the trademark exactly as it was registered makes that trademark vulnerable to cancellation. What this means is, that if you register your wine trademark with a logo, then you need to use that logo in your labels and advertising always and forever. To not use the exact same word/logo combination, is to weaken your trademark.

In USA, for example, your renewal will be rejected if your wine label shows these differences:

The words are now in Calibri font instead of Arial

The words are now underneath the logo instead of above

The farm now has a lake.

An amendment or possibly even new filing would be required, increasing your long term trademark maintenance costs.

Stylized letters, such as a unique font/color of words only should never be filed. If your trademark is words only, why lock yourself into a single font/size/format/color ?

In most countries, the strength of the filing of a word/logo combination is primarily on the word portion. There are occasions, however, in some countries, when the word/logo combination can be used in a strategy to differentiate your trademark from something similar already in the trademark process.

When budget allows, the best strategy is to file 2 trademarks:

1)      words only with no specified color/size/font/format

2)      then file the logo separately

This strategy protects your accumulated rights on the word portion of your trademark (your brand name). If your logo does change, you only have to re-file the logo portion at renewal time, and your word portion grows stronger with each passing year.