Filing a combined mark (word + device) as a single application has two structural drawbacks: during examination, if any element is similar to another's prior trademark, the entire application is rejected; and after registration, the mark must be used as registered, as a whole, and cannot be freely split or recombined. Registering the word and device separately brings a higher pass rate, more flexible use, and more complete protection.
Risks of Filing a Combined Mark as a Whole
- All-or-nothing examination: each element of a combined mark is compared separately; if either the words or the device is similar, the whole trademark is rejected once one conflict is found. You pay for a combined mark but bear a multiplied rejection risk.
- Restricted use: a registered trademark should be used as approved. After combined registration, the position and proportion of the words and device are fixed; in actual use, using the logo alone or the brand name alone constitutes non-standard use, which in extreme cases may affect maintenance of the right.
- Narrower enforcement scope: the scope of protection of a combined mark is judged on overall similarity; if another party imitates only the word portion, it may not fall within the protected scope.
Benefits of Separate Registration
- Higher pass rate: the word mark and the device mark are examined independently; rejection of one does not affect the other.
- Flexible use: word, device, and combined forms can be mixed and matched at will — each counts as use of a registered trademark.
- More complete protection: whether others copy the words or the device, a corresponding rights basis can be found.
Practical Advice
- Where budget allows, applying for the word mark and the device mark separately is the optimal solution.
- If a combined mark is also desired, it should be filed as a third, supplementary application — not as the only one.
- Before filing, conduct similarity searches for the word and device portions separately, searching the device portion by figurative element codes.
If you are facing the issues above, you may first engage trademark agency registration services on MyTMBee and confirm feasibility before deciding whether to file, so as to avoid wasting official fees on a blind application.