A Logo Glow-Up Without the Legal Foul-up

Who doesn’t like a wardrobe update? Just like swapping out old clothes for something fresh and modern, updating your brand’s design can be an exciting way to keep things stylish, stay relevant, and engage with your audience. Maybe you’re tweaking your logo, refreshing your color palette, or modernizing your typography. But while a design update can feel like a creative endeavor, it also comes with some legal considerations—especially when it comes to trademarks. Here’s what you need to know to make sure your update goes smoothly without putting your brand protection at risk.

"IKEA’s logo evolution showcases how a brand can modernize while maintaining its identity. Image source: IKEA (https://www.ikea.com/ph/en/this-is-ikea/about-us/the-ikea-logo-history-and-design-pub55d85f50/)."

How Does a Design Update Affect Trademarks?

Trademarks must be actively used in commerce to maintain their legal rights. This use requirement is a critical aspect of trademark protection. If you stop using a trademark—whether it’s the original or a modified version—your trademark could be considered "abandoned," which means it may no longer be protected. This opens the door for other businesses to potentially claim that trademark as their own.

In the case of a design update, if you’re changing your logo or other visual elements but keeping the same business name, your wordmark (which covers the text portion of your brand) might still be valid.

Basically, the key to maintaining trademark protection—whether for an updated design or the original—is to keep using the mark in commerce. This ensures that your rights are preserved and prevents others from claiming it.

Do You Need a New Trademark Registration?

When it comes to whether you need to register a new trademark, it depends on the nature of the changes. If your logo or design changes significantly, you might need to file for a new trademark. Again, if your previous registration is a wordmark (just the name of your business/products without a specific logo or design), you may not need to register a new trademark.

Of course, if the changes are substantial, it’s always a good idea to check with a trademark expert to ensure your existing protection still covers the new look.

How Your New Design Affects Licensing and Agreements

If your previous design was part of any licensing or partnership agreements, those deals may need to be updated to reflect the new design. It's also essential to review trademark assignments, merchandising contracts, or any other agreements tied to your brand. If your updated design includes changes to the logo, you may need to adjust those agreements accordingly. Additionally, keep an eye on the market to ensure that neither the old nor new design is being misused or copied by others.

Final Thoughts

Refreshing your brand’s design is a great way to stay modern and relevant, but don’t overlook the legal side of things. By understanding how your design update might affect your trademarks and ensuring that your new design is properly protected, you can avoid unnecessary legal issues and keep your brand secure. So, go ahead—give your brand a fresh new look, just make sure you're doing it the right way!

Understanding Trademark Types

Protecting your brand starts with choosing the right type of trademark registrations. Here’s a guide to four common types—Word Marks, Stylized Word Marks, Device/Logo Marks, and Combined Marks—to help you make the best decision for your business.

1. Word Mark

A Word Mark protects your brand name or slogan as plain text, without specifying fonts, colors, or styles.

*example of a word mark

Strengths and Limitations

Registration: Straightforward for distinctive terms, but descriptive or generic names (like “Best Coffee”) may be difficult to register.

Flexibility: Highly adaptable; you can use it in any style, font, or color.

Enforcement: Offers strong protection against similar names

2. Stylised Word Mark

This trademark type protects the specific design of your text, including fonts, colors, and layout.

*example of a stylised word mark

Strengths and Limitations

Registration: Can be easier to register compared to word marks if the design/font is distinctive.

Flexibility: Limited to the exact design; changes to style, font, or layout may require a new registration.

Enforcement: Protects against imitations of the specific design but may not guard against generic use of the text in other styles.

3. Device/Logo Mark

A Device/Logo Mark protects your logo or graphic design without tying it to any text.

*example of a device/logo mark

Strengths and Limitations:

Registration: Usually easy to register especially if the device is uncommon or creative.

Flexibility: Excellent for visual branding but not the most flexible as it cannot be used effectively in purely verbal contexts (e.g. on the radio).

Enforcement: Strong protection against use of similar graphic designs.

4. Combined Mark

This type of trademark covers a combination of text and graphics, such as a logo paired with your brand name.

*example of a combined mark

Strengths and Limitations:

Registration: Provides comprehensive protection for the specific combination and usually easy to register especially if the words are not generic/descriptive.

Flexibility: Limited—text and graphics must be used together as registered; separate use requires additional registrations.

Enforcement: Strong for the combination but harder to enforce against partial imitations.

Final Thoughts

The right trademark depends on your brand’s needs. Word Marks are versatile and great for broad protection, while Stylized Word Marks and Device Marks work best for distinctive visuals. Combined Marks offer robust coverage for cohesive branding.

No matter the type of trademark, one rule applies across the board: your mark must be used as it is registered. Altering the design, layout, or separating elements can weaken your protection or require additional registrations. Consistency is key.

Need help deciding? Get in touch with us today to safeguard your brand and ensure it stands out!

Trademark Trouble: When Your Ex Claims More Than Just the Fur Kids

Photo by Marek Studzinski on Unsplash

At Gordian IP, we've come across our fair share of eyebrow-raising situations where someone else – often someone you know – has registered a trademark that isn’t theirs. It's more common than you might think! The truth is, these trademark mix-ups usually come from people close to the trademark owner, leading to some awkward (and sometimes heated) conversations.

CLASSIC TRADEMARK DRAMA

1. Business Partners Turned Rivals

   Business partnerships are like marriages: they work great until they don’t. When business relationships sour, one partner may attempt to claim ownership of the company's intellectual property, including trademarks. This often happens when no clear agreement on trademark ownership exists, leaving both parties in a legal struggle.

   
   

2. Ex-Spouses (Yes, it's more common than you think!)

   Ah, breakups. They come with all kinds of baggage, and sometimes, that includes a trademark dispute! Believe it or not, it's not unusual for one spouse to try to claim the business's trademark after a split – it’s almost as common as fighting over custody of the fur kids. It worse when ex-spouses are also ex-business partners!

   
   

3. Overseas Distributors Playing It Fast and Loose

   Expanding globally? Excellent! But be careful with international distributors. Sometimes they get a little too enthusiastic and register your trademark in their own country – without asking. This can create a huge headache when you try to officially enter that market. Surprise!

   
   

4. Sibling Rivalries in the Family Business

   Sibling drama doesn’t stop at who gets to call shotgun. In family-run businesses, trademarks can become the subject of squabbles. One sibling might rush to register the family trademark, hoping to get ahead in the race for inheritance or business control.

   
   

How to Avoid a Trademark Tangle

These situations might make for entertaining stories, but you don’t want to find yourself in one! Here are some tips to keep your trademarks safe and avoid future headaches:-

1. Put It in Writing, Early On

   Whether it’s a business partner, spouse, or family member, it’s important to have a clear, written agreement about who owns the trademark. Don’t wait until things go wrong. Formalize ownership from the start, and be sure to include what happens if someone leaves the business or if (heaven forbid) a relationship falls apart.

   
   

2. Register the Trademark in Your Name

   It sounds obvious, but make sure the trademark is officially registered in the name of the rightful owner – whether that’s you or the business. Don’t let someone else handle the application unless you’ve got complete trust and a clear agreement. If your name is on the trademark, it’s much harder for someone to take it from you later on.

   
   

3. Think International – Register Globally

   Planning to expand overseas? Register your trademark in those markets ahead of time. This stops overseas distributors or third parties from trying to claim it as their own in foreign jurisdictions.

   
   

4. Sort Out Wills and Probate for Trademarks

   If you personally own a trademark, make sure it’s part of your will and that you’ve clearly outlined who should inherit it. Having a plan in place could avoid a real-life Succession situation when you do eventually bite the dust. Without a clear direction, your family or business partners could end up in a messy probate battle over the brand you worked so hard to build – and nobody wants that kind of drama!

   
   

5. Include IP Clauses in Contracts

   Whether you’re working with business partners, distributors, or family members, make sure your contracts explicitly state who owns the intellectual property. This is especially important when expanding internationally or dealing with multiple stakeholders. A well-written contract will prevent any misunderstanding down the line.

   
   

6. Monitor Your Trademark Regularly

   Stay proactive by regularly checking trademark databases to ensure no one else has registered your trademark. If something looks fishy, address it right away before it turns into a bigger problem.

   
   

Wrapping It Up

Trademark issues often arise when you least expect them – and they’re usually caused by someone familiar! To avoid ending up in a legal tangle, it’s important to plan ahead and follow some best practices. Whether it’s making sure the right name is on the trademark, including it in your will, or having solid contracts in place, taking these steps early will save you from future headaches.

If you ever find yourself in one of these sticky situations, don’t worry – at Gordian IP, we’ve seen it all and are ready to help you sort things out. Whether it’s ex-spouses, business partners, or family feuds, we’re here to protect what’s yours!