Can a single trademark application cover multiple trademarks?

Only one mark per application

It should come as no surprise that one trademark application can cover only one mark. In other words, you may not register multiple trademarks in a single application. What may be more tricky to discern is whether a logo contains multiple marks. Let’s discuss the trademark examination rules that provide some guidelines on whether we’re dealing with a single trademark or multiple marks.

Does your logo contain two or more trademarks?

This issues arises primarily in design marks (i.e., logos) since word marks with standard characters omit any graphical design, orientation and peculiar spacing. So how can we tell if a design mark might possibly contain multiple marks that would violate the one mark per application rule?

TMEP 807.01 provides helpful guidance. A single projects a unitary commercial impression. When a drawing of a mark contains spatially separate elements, the USPTO trademark examining attorney may question whether the application is seeking to register more than one mark. If so, the trademark application will be rejected. Amending a drawing to remove a portion of the original logo may prove difficult since such a drawing amendment carries the risk of materially altering the original mark.

When can an application potentially contain multiple trademarks?

If you are thinking about filing a single application for a logo that has the potential of being regarded as multiple trademarks, one practical factor to consider is the spacing between the elements in the drawing. Is there a bit too much spatial separation?

Another factor would be the possibility that certain elements in the drawing each create a distinct commercial impression. For example, is a first group of terms with a first graphic image being combined with a second group of terms and a second graphic image?

If you have a combination of a graphical image and wording, consider whether the graphical image would ever be used by the trademark owner apart from any wording. If so, it may be worthwhile to file a trademark application for the graphical image alone and a separate application for the wording in standard characters (i.e., no logo).

At the end of the day, it will be a judgment call for the USPTO trademark examining attorney assigned to your application. Amending the drawing might be an option if the proposed amendment does not materially alter the mark. The problem, however, is arguing how changing a 2-mark drawing to a single mark drawing would not be a material alteration.

We generally like to err on the side of caution. If there is a risk that multiple marks may be seen in a logo, then consider other options, such as filing for each mark separately.

Want to file a trademark application the right way?

Contact US patent and trademark attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you file a proper trademark application that will save time and money.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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