Registration Priority: I Have Many Trademarks, Which Should I Register First?

CircleR_RegisteredTMBusinesses often have many trademarks, such as, the business name, product names, service names, logos, slogans, tag lines, etc. The question arises which of those trademarks should be registered and what is the priority order for registering of those trademarks? Trademark registration carries a cost. Therefore, the decision to register is a balancing between the importance of the trademark and the cost of obtaining a trademark registration, when allocating a limited budget for trademark registration. Assuming other factors are equal, the question you should ask with respect to each of your trademarks is: how important is this trademark to my business as compared to other trademarks of my business?

Below is an example priority order for registering trademarks (e.g. a registration priority). The list is a generalized example and your circumstances may indicate a different priority order is appropriate for you. The following list assumes that each trademark is equally registerable and protectable. However, this is not always the case because some trademarks are weak and some trademarks may conflict another party’s trademark. Therefore, sometimes the weak nature of a mark, or its conflict with another mark, or other factors will reduce the trademark’s registration priority or remove the trademark from the possibility of registration or protection.

1. Business Name
Generally the most important trademark a business has is the business name with which the business uses to sell it goods or services. Because your business name is used with all of the goods and services you provide, your business name may be the most important trademark that your business owns. If that’s the case, then seeking a federal trademark registration on your business name may be the first priority. However some businesses do not use their business name when selling, rendering service, or interacting with customers, suppliers or others, in which case a trademark registration on the business name may not have a high priority. Instead product names, service names, or taglines, may have a higher priority.

2. Products and Service Names
Following business names, product and service names tend to be the second most important in a business. Product and service names are those that the customers deal with directly when purchasing your goods or services. Some businesses have many different products and services, so it may be necessary to prioritize which product and/or service names should be registered. You may use whatever measures your business uses to evaluate the importance of a particular product, service, or line of products or services. Some factors which may indicate an importance are: (1) the volume of unit sales of a given product or service, (2) the gross revenue or a net profit realized from the sales of a given product or service, (3) the amount of advertising and marketing dollars allocated or spent for a particular product or service, (4) the amount of customer or media recognition received for a particular product or service, and/or (5) the technological features of a particular product or service that provide advantage over the competition. The bottom line is that it’s a business decision on evaluating the importance of a particular mark.

3. Taglines and Slogans
Taglines and slogans can function as a trademark to identify a source of goods or services. Therefore a trademark registration can be sought for them. Certainly there are cases where slogans are very important to the owner. However when starting out, slogans probably have a priority that is lower than a company name and the company’s product and service names. Therefore seeking a trademark registration over a tagline or slogan may be prioritized behind registering a business name and important product and service names. However in some cases the tagline or slogan will be as important as the business name.

4. Logos
Logos or graphical elements may be used with a business name, with a product or service name, or with taglines or slogans. Again it depends on how important your logo is to your business. See this article for more on deciding whether to include a logo in your trademark application.

The priority order listed above is generalized. Individual business circumstances will help rank the appropriate priority order of trademark registration for your business. The question that should be asked is: how important is this trademark to my business as compared to other trademarks of my business? Once you have ranked each trademark based on an answer to that question and considered other factors such as trademark strength and trademark conflict, you have an example priority order from which you can make trademark registration decisions. Then you can place that priority order against the funds available for trademark protection to determine how many registrations to seek when allocating a limited budget for trademark registrations.