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Advice: Logo dual registration Service mark/Collective membership mark?

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Superlost

Junior Member
What is the name of your state (only U.S. law)? Pennsylvania.

Hello all. I have found myself with the task of registering a denominations logo. The denomination wants it's affiliate churches to use the logo, thus it should be registered as a collective membership mark. Am I right so far? The denomination also wants to provide it's services under the logo, so it should be registered as a service mark. Can I dual register this logo as a service mark/collective membership mark? Will I have to file separately? I hope someone can help, I can't find any info about this. Thanks!
 


quincy

Senior Member
What is the name of your state (only U.S. law)? Pennsylvania.

Hello all. I have found myself with the task of registering a denominations logo. The denomination wants it's affiliate churches to use the logo, thus it should be registered as a collective membership mark. Am I right so far? The denomination also wants to provide it's services under the logo, so it should be registered as a service mark. Can I dual register this logo as a service mark/collective membership mark? Will I have to file separately? I hope someone can help, I can't find any info about this. Thanks!
First, the best source of information for you will be the United States Patent and Trademark Office, accessible through their website at: http://www.uspto.gov. Applications and electronic filings are available through http://www.uspto.gov/teas/e-TEAS/index.html.

Few applications will get through the trademark examination process without question from the trademark examiner, who will notify you if there is a problem with your application as filed. So don't be too concerned if you find your application is not filled out perfectly. Less than half are. :)

A question: Is the church currently using the logo you plan to register? Or are you planning to file an Intent-to-Use application?

Collective marks are used to identify membership in a group or organization and are for use by the general membership as a whole and on a more-than-occasional basis (such as for membership cards). The use is restricted to members only (all members). Service marks are used when your intention is to use the mark for your unique services in commerce. The term mark refers to all collective marks, service marks, trademarks, and certification marks.

When you register your mark/logo, you can register it in more than one class, but you will be paying extra fees for each class.

I hope that you have done research into your logo design to ensure it is, not only distinctive, but that it does not conflict with another's design. There have been disputes between churches, and between churches and companies, in the recent past over names and logos that too closely resemble each other.

Do not expect to hear back from the trademark office on your application for three to six months after filing, unless a review turns up a question from the examiner.

Good luck.
 
Last edited:

Superlost

Junior Member
Thanks quincy!

I appreciate your response. I have done extensive "foot work" on this. The logo is as original as a church org logo can be. All the crosses and globes you know. (chuckles) The organization is still in it's infancy, but the logo has found it's way onto their stationary and will soon be on their certificate of affiliation.
What I have gathered from the US Trademark and Patent website is that it is better to actually use your logo prior to registering. Less paper work and cheaper in the long run. Am I right? And what I gathered from your response is to just jump in with both feet and that I won't be the first nor the last to have mistakes.
But I still have one nagging question. If I register it as a service mark and a collective membership mark, that is two completely separate E-Forms to file for the same logo. Can I do that? I wish I could file them together. :(
 

quincy

Senior Member
I appreciate your response. I have done extensive "foot work" on this. The logo is as original as a church org logo can be. All the crosses and globes you know. (chuckles) The organization is still in it's infancy, but the logo has found it's way onto their stationary and will soon be on their certificate of affiliation.
What I have gathered from the US Trademark and Patent website is that it is better to actually use your logo prior to registering. Less paper work and cheaper in the long run. Am I right? And what I gathered from your response is to just jump in with both feet and that I won't be the first nor the last to have mistakes.
But I still have one nagging question. If I register it as a service mark and a collective membership mark, that is two completely separate E-Forms to file for the same logo. Can I do that? I wish I could file them together. :(
You can only register one mark per application, although the one mark can consist of several different elements (for instance, words that go along with the design). You can also register on one application the single mark in several different classes (although there is a separate filing fee for each class).

If you are using the mark as a collective mark, the same mark cannot be used to identify any products or services offered to non-members. A collective mark is to identify the members of a group. For example, if Local Union 187 has a logo designed for their membership, and this mark goes on membership cards, and on hats and tee shirts, and is used on the official Union correspondence, this same logo cannot be used on cards, hats, tee shirts or stationary marketed to the public at large.

For questions on this, your best source will be the USPTO or an IP attorney in your area. You can call the USPTO at 1-800-786-9199 (select option #1) or you can correspond by email to [email protected]. The USPTO will NOT be able to give you legal advice but CAN answer questions on how to fill in the application.

I suggest that, to cover all bases, you contact an attorney in your area to go over your plans for use of the logo design and to help you in filling out your application(s). Although errors in applications are common, you want to avoid them if possible. ;)

Good luck, Superlost.
 

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