A combination trademark (word + device) may be used in split form after registration, but each separately used part is not protected by the exclusive right in the registered trademark, may not carry the registration mark (®), and in a non-use cancellation defense, prominent use of a separate part alone may not be recognized as use of the combination registered trademark.
Why Split Use Is Risky
Article 56 of the Trademark Law provides that the exclusive right to use a registered trademark is limited to the trademark as approved for registration and the goods as designated. What was approved for a combination trademark is the overall "word + device" representation; the word or device used separately after splitting is not the trademark on the registration certificate:
- No exclusive right: if others imitate the separately used part, it is difficult to enforce based on the combination registered trademark;
- No (®) allowed: placing the registration mark (®) next to an unregistered separate part constitutes passing off as a registered trademark, violating Article 52 of the Trademark Law;
- Non-use cancellation risk: if all defense evidence shows only the separately used parts, the examiner may find that genuine use of the registered trademark is not shown.
The Correct Registration Strategy
- Register separately: apply for the word mark and the device mark individually, and add a combination mark if needed, forming layered protection;
- Use as registered: in actual use, try to ensure that each registered trademark has evidence of use of its complete representation;
- Combined use may carry the (®): when the combination trademark is used as a whole and consistently with the registered representation, the registration mark (®) may be applied.
Remedy for Existing Combination Registrations
Companies that currently hold only combination registrations should file separate registration applications for the core word and core device as soon as possible; before approval, use the separate parts without the (®) to avoid the risk of passing off as registered.
If you encounter a similar situation, we recommend first consulting a registered agency at MyTMBee to assess whether archive management is needed before deciding on the next step.