“Secretary, I just opened a new restaurant called O貝 and would like your help with trademark search and filing.”
“Hello, Mr. Chen! I did a preliminary search on the name, and the results look promising. Will you be applying for a word mark only, or do you also have a logo design?”
“I have a logo design—I’ll be submitting both the text and logo together. I’ll send you the file.”
“Got it. However, Mr. Chen, after reviewing your logo file, I’d recommend that you apply for the graphic and text separately.”
“Why?”
“Mr. Chen, let me explain…”
…
Many clients are often confused when applying for trademarks, wondering why the trademark assistant recommends filing the combined logo and text as separate applications.
In fact, this isn’t about charging extra service fees—it’s a professional recommendation based on the pros and cons of separate filings.
For example, when the graphic and text are registered separately, they can be used independently or together in the future.
However, if they are registered as a combined mark, they must be used as a whole. If you use only part of it, consumers may become confused, and the trademark may lose its distinctiveness—leading to it not being recognized as proper use of the registered trademark.
Pros and Cons of Combined vs. Separate Applications for Text and Graphic Trademarks
1. Risk
a. Combined Text and Graphic Registration
Although your trademark is a combination of text and image, examiners will review the Chinese characters, letters, and graphic elements separately during the examination process. If any of the elements are identical or similar to a previously filed mark, the entire trademark application may be rejected.
b. Separate Text and Graphic Registration
When filed separately, each trademark is examined independently, and the outcome of one does not affect the other. This significantly increases the chances of approval. It also offers greater flexibility in usage—you can use the elements separately or together—and strengthens brand defense.
2. Cost
a. Combined Text and Graphic Registration
A combined application is more cost-effective—no matter how many elements are included, submitting them as a single trademark requires only one application fee.
b. Separate Text and Graphic Registration
Filing separately incurs higher costs, as each trademark requires a separate fee. However, while the upfront expense may seem greater, the long-term intangible benefits—such as the ability to license or transfer each part independently—far outweigh the extra cost.
3. Usage
a. Combined Text and Graphic Registration
Usage is fixed! The trademark must be used exactly as it was registered. Any change to a part of the mark requires reapplying for the entire trademark. Otherwise, based on consumer perception, altering the mark could change its brand identity, causing it to lose its distinctiveness and no longer be considered proper use of the registered trademark.
b. Separate Text and Graphic Registration
Usage is more flexible! Each trademark can be used independently or together. If you want to change one element, you only need to reapply for that specific part—other trademarks remain unaffected.
4. Profit from Sale
a. Combined Text and Graphic Registration
Less profitable! A single trademark sale generates only one stream of income, and combining the text and graphic may even limit marketability. In licensing, the entire combined trademark must be licensed as a whole—no partial licensing is allowed.
b. Separate Text and Graphic Registration
More profitable! Each trademark is independent, so selling one does not affect the status of the others. In licensing, you can license them separately, generating multiple streams of income.
5. Infringement Determination
a. Combined Text and Graphic Registration
Infringement is harder to determine. When infringement occurs, it’s more difficult to clearly assess the extent of infringement and calculate compensation, as the combined elements complicate evidence collection.
b. Separate Text and Graphic Registration
Infringement is easier to determine. When infringement occurs, it’s more straightforward to assess the situation, gather evidence, and calculate damages, as each element is independently protected.
In summary, registering text and graphics separately provides great flexibility in both usage and profitability. It also makes it easier to defend your rights in case of infringement. Additionally, separate applications ensure that issues with one part of the mark won’t affect the examination outcome of the entire trademark.
