USING YOUR TRADEMARK PROPERLY
Your company’s trademark(s) are extremely valuable assets. Therefore, proper use and policing of your mark(s) are essential to protecting what may be your company’s most valuable asset – its good name. Trademark rights are acquired by actual use. Once you have established trademark rights, the rights can last indefinitely. However, it is important to note, failure to prevent others from infringing on or misusing or your mark may result in a loss of trademark rights. The following guidelines for proper trademark use apply to advertising and promotional materials, packaging, displays, labels, signs, correspondence, websites, and any other media used to promote the mark.
PROPER TRADEMARK USAGE & GRAMMAR
Use Trademark as Adjectives, Not Nouns or Verbs
The purpose of a trademark is to identify the source of a product or service. They are adjectives and should never be used as nouns or verbs. Use of the mark as an adjective helps to distinguish the mark from the generic term (noun) it identifies. Thus, whenever possible a trademark should be followed by the common descriptive or generic name (noun) of the product it modifies. Alternatively, You may use the word “brand” after the trademark: Scotch® brand and transparent tape or generic name of the product (i.e. tape). Examples of proper use include:
APPLE® computer or SAMSUNG® phone
Note: each trademark (adjective) is used to modify the generic term (noun);
Avoid Plural and Possessive Forms
Since trademarks are adjectives, they cannot possess anything. Therefore, they should not be used in the plural or possessive form. If there is a reference to more than one trademarked product, do not use the trademark in the plural form. Instead, use the plural form of the generic product to which you are referring. The exception to this rule is if the actual trademark is plural (i.e. Starbucks) or in the possessive form (i.e. McDonald’s)
INCORRECT: Could you pass me some kleenexes so I can blow my nose?
CORRECT: Could you pass me some KLEENEX® tissues so I can blow my nose?
INCORRECT: I am going to buy NIKE’s new sneakers next week.
CORRECT: I am going to buy the new NIKE® sneakers next week.
IDENTIFY YOUR RIGHTS IN THE MARK
It is extremely important to provide the public with notice of your trademark rights, irrespective of whether it is registered or unregistered. There are several methods of providing notice. The most common methods are using the symbols TM, SM, or ®. The appropriate designation depends on whether the mark has been registered with the U.S. Patent & Trademark Office ("USPTO").
Federally Registered Trademarks
If a trademark has been registered with the USPTO, the registration notice ®, REG. U.S. PAT. & TM. OFF., or Registered in the U.S. Patent and Trademark Office should be used on or in connection with the mark. Alternatively or as a supplement, you may also include a statement: “ABC is a registered trademark of Company, LLC” or “XYZ is a trademark of ABC Corporation” (for unregistered marks).
These notices should never be used if the mark has not been federally registered for the subject product or service. Use of such notice before actual issuance of a certificate of registration for the mark may be the basis for refusal of registration. In addition, if these notices are used on unregistered marks, such conduct is subject to criminal prosecution and accordingly punishable by fines and/or imprisonment. Examples of proper notice are provided below:
WIDOWS, Reg. U.S. Pat. & Tm. Off.
Samsung, Registered, U.S. Patent and Trademark Office
It is important to note that the use of a statutory notice is not required.
However, unless the infringer has actual knowledge of the trademark owner’s registration, the failure to display proper notice of registration can preclude a trademark owner from collecting damages and profits in a trademark infringement suit.
Unregistered or Pending Trademarks
Common law notices “TM” for a trademark (GALLO™) and “SM” for a service mark (NEST PROTECT℠) should be used if:
the trademark is not federally registered; or
your application for registration is pending.
The use of any trademark notice has no bearing on whether the term or logo has been put to proper use. However, these designations help to deter potential infringers and make clear that you are claiming the term or logo as a trademark.
DISTINGUISH YOUR MARK FROM THE SURROUNDING TEXT
Trademarks should be distinguishable from surrounding text. This will further help to distinguish the trademark from the ordinary descriptive or generic terms. There are several ways to display a trademark and make it distinguishable. A non-exhaustive list of examples includes:
All capitals: NIKE® sneakers
Italics: Life Savers® candy
Quotation marks: “Wrangler”® jeans
Boldface: Pizza Hut® restaurant
As you can see from the examples above, the generic product name should not be capitalized.
CONSISTENCY IS KEY!
You should always display your trademark in a consistent manner. Therefore, variations should be avoided. That means, do not change the spelling, abbreviate the mark, add or delete terms from the mark, or change a design element that is part of the mark. Your failure to use a mark consistently can result in consumer confusion or weaken the distinctiveness of the mark. Whereas, consistency will enhance the distinctiveness and consumer recognition in your mark.
POLICE YOUR MARK
When you discover that another business or individual is misusing your mark (i.e. using it as a noun or mutated the design) or infringing, it is imperative that you take immediate action to prevent any further unauthorized use or misuse. Failure to enforce your rights may result in a loss of rights in the mark.
AFFIX MARK TO YOUR PRODUCTS AND SERVICES
It is important to understand that not all advertising phrases, business slogans, product names, etc., are bona fide trademarks or service marks. Proper trademark use arises, for products, when the mark is “affixed” to the product; and for services, the mark must be used in connection with rendering a service. Affixation occurs when the trademark is applied directly to the product, commercial packaging, or on labels or tags of the product. Service marks are affixed when they are placed on signage or other advertisements that promote your services. Affixation for service marks also arises when used on letterhead, business cards, and invoices if there is an adequate association created between the mark and the services provided.
LICENSE YOUR MARK WITH CARE
If you are authorizing third-party use of your mark, a properly drafted licensing agreement is critical. Failure to execute the appropriate agreement may result in what is commonly referred to as “Naked Licensing.” Naked licensing arises when an owner permits third-party use its mark without adequate quality control. Naked licensing results in a disassociation between the mark and its function as a source-identifier, which then results in abandonment and eventually loss of rights in the trademark. Therefore, agreements pertaining to trademark use must provide standards controlling the manner in which the licensee may use the mark.
Frequently, due to the nature of the relationship with the licensee, trademark owners fail to maintain proper controls and oversight. For instance, without realizing the implications, a parent company may not find it necessary to enter into a licensing agreement with its subsidiary. Or, a family-owned business may not understand the need to enter into a licensing agreement with a family member that opens a new branch in a separate location. These situations arise because the trademark owners in both of these situations fail to grasp the notion that trademark law does not only protect an owner's right to use their mark in any manner that the owner desires, but, that trademark law protects consumers from confusion relating to the origin of a product or service. Therefore, trademarks must be used and enforced to prevent such confusion – naked licensing fails to ensure such compliance, and therefore, may result in loss of rights in the mark.
Improper trademark use such as those discussed in this post can result in the loss of trademark rights. Such improper use typically results in what is sometimes referred to as “genericide.” Genericide occurs when consumers no longer perceive a trademark as originating from a single source, but instead as a product category or descriptive characteristic of the product. When a trademark is used to identify a category of like products and no longer identifies a product from a single source, that mark becomes generic and available to all to use to describe their products. Some examples of common brands that are now generic or straddle the line of genericide are ASPIRIN, BAND-AID, ESCALATOR, and KLEENEX. In order to prevent genericide of your mark(s), it is important that you are vigilant about ensuring the proper use of your company’s trademarks.
These guidelines are by no means exhaustive or inflexible. But, your efforts to follow them makes it less likely that your trademark will be improperly used. Moreover, adhering to these rules is likely to increase consumer recognition and ensure that your trademark is being used in a manner that will maintain its strength and distinctiveness. As a trademark owner, be sure to use it properly… OR ELSE!
This blawg is provided by the firm for informational purposes only and may not be relied on as legal advice. If you have any questions related to your specific business needs, please schedule a legal consultation today.