Quote from Martin Schweiger on July 16, 2018, 5:30 am

Your example is a very common case which happens often in practice.

The most important rule is that one should always register a trademark as it is used. As a general rule, if a trademark is not used as it is registered, it will become vulnerable because third parties can then successfully cancel the registered trademark.

In the case of your example, there is a stylized word contained in the mark, which is also used alone, without the logo. That calls for a word mark registration of the term "UGZZZ" alone, without the logo. Trademark registration would be requested for the word "UGZZZ" in non-stylized form because such a trademark grants protection for a wide range of stylized forms of the word "UGZZZ", inclusive your version above.

As logos and stylized forms of word marks change over time, this word mark "UGZZZ" in non-stylized form will become an important asset of your client's company as the word components of trademarks usually don't change over time.

Then you need a second mark for the logo alone, as it is also used alone, without the word "UGZZZ".

That is the absolute minimum. If they use the logo together with the word, they must then make sure that these are recognized as two independent trademarks. You can do so by marking each one of them with a "R in circle" symbol. A third party later can then not easily claim that they did not use the two single trademarks, because they have used a different trademark that consists of the two trademarks together.

If you want to play safe, you can also file a third trademark for the logo together with the stylized word, but that is an "overkill" that only companies with deep pockets do in practice.

Please don't forget to take the relevant courses in our courses section before you file your own trademark application. You will have to make decisions during filing that have consequences that cannot easily be corrected at a later time.