Use It Right or Lose It — Proper Trademark Usage Is Important to Every Business
Nowadays, almost every business has a trademark or service mark. With any luck your mark is memorable to the public and helps in the sale of your products and/or services. You probably spent a good deal of time and money creating and registering your mark. Now you are investing even more resources on advertisements and promotions that include your mark, and building the goodwill of the mark. The last thing you want to happen is to lose the exclusive right to use your mark because of something you do or fail to do–especially when the action or inaction is easily avoidable.
Proper trademark and service mark usage is extremely important. A business may unknowingly be using its mark improperly, which then may undercut the mark’s value and jeopardize its registration; as well as jeopardize the ability to prevent other businesses from using a similar mark.
Bayer’s Trademark Headache
Trademarks and service marks are frequently just words. Yet, it is word usage that often can make trademark rights or destroy them. Some of the strongest marks–those that are coined terms–are the most fragile. For example, “aspirin,” “escalator” and “thermos” are words that once signified the source of a particular brand of painkiller, moving staircase and insulated food container, respectively. Now they are common terms for these products and are available for use by anyone. The respective companies did not properly use and adequately protect their mark, and thus each of these marks has become generic and is now available to anyone to use. Just think of the tremendous value the Bayer Chemical Company, for example, would have retained if it had used “aspirin” properly as a trademark for its chemical compound for pain relief. Furthermore, since trademark rights are renewable indefinitely, Bayer Chemical Company could have forever retained the exclusive rights to use “aspirin” for a pain relief chemical compound. Talk about a competitive advantage–but now all of Bayer’s competitors are free to use and do use the term “aspirin.”
The following are some basic rules that are important in protecting trademarks and service marks.
1. Use Marks As Adjectives–Not As Nouns
Trademarks are adjectives that modify a generic noun. So, a mark needs to be used as an adjective and not as a noun. Using a mark as an adjective is simple — simply have the common descriptive name (noun) of the product or service follow the mark. Ideally, this should be done throughout all material, but at a minimum it should be done the first time the mark appears prominently. For example:
Correct: Buy TIDE detergent for whiter clothes.
Incorrect: Buy TIDE for whiter clothes.
Correct: Use VASELINE petroleum jelly.
Incorrect: Use VASELINE.
A good test for proper usage is if you delete the mark from the sentence, the sentence should still make sense.
Using a mark as an adjective is important because you do not want your mark to become the generic name for the product, like aspirin, escalator, thermos, and countless others.
The word “brand” may also be used to reduce the possibility that the trademark will be thought of as the generic name for the product or line of products. For example: BAND-AID brand adhesive bandages, or SCOTCH brand transparent tape.
Also, as proper adjectives, trademarks should not be used as common descriptive adjectives. Thus, it is improper to use a trademark for a raw material to describe finished products made from it. For example:
Correct: The flotation equipment made of STYROFOAM plastic foam can be readily installed.
Incorrect: The STYROFOAM flotation equipment can be readily installed.
2 Use Marks As Adjectives–Not As Verbs
Similar to not using a trademark as a noun, a trademark should also not be used as a verb. For example:
Correct: Make six copies on the XEROX copier.
Incorrect: XEROX this report.
3. Use Marks On Or In Connection With Their Approved Product Or Service
Use your mark only for the goods or services for which it has been registered or otherwise determined to be available. If you want to use the mark for other goods or services, make sure the mark is available for those goods or services.
4. Consider Using Distinctive Type
It is advisable to use a trademark in a manner that will distinguish it from surrounding text. This can be done by simply capitalizing the trademark completely, or using distinctive lettering or a unique typeface. The generic product name, however, should not be capitalized. Other suitable alternatives for distinguishing a mark are to place ‘the mark in italics, bold-faced type or a different color, but again the generic product name should be in the same type as the rest of the document. For example:
Correct: FANFARE brand travel services – or•- Fanfare brand travel services – or- Fanfare brand travel services
Incorrect: fanfare travel services – or- Fanfare Travel Services
5. Use The Trademark Notice
Whenever possible, a trademark notice should follow the mark at least once, generally in a relatively prominent location. As an easy guideline, if the mark is in a headline or title, use the notice there and/or the first time the mark appears in the text.
The registration notice ® or REG. U.S. PAT. & TM. OFF. should be used when a mark has been federally registered with the United States Patent and Trademark Office for that product or service. The ® or REG. U.S. PAT. & TM. OFF. should never be used if the mark has not been federally registered for the product or service concerned. Use of such notice before actual issuance of a certificate of registration for the mark may be the basis for refusal of registration.
Instead, if a mark is not yet federally registered, use the letters “TM” for a trademark and “SM” for a service mark.
An asterisk can also be used to refer to a footnote that explains that the word(s) is a trademark or service mark and indicates who owns the mark.
If your mark is not registered, consult experienced legal counsel to prepare and prosecute the application for you.
6. Do Not Vary The Mark
Do not change the spelling or proper type form, add or delete terms from the mark, abbreviate the mark, or change a design that is a part of the mark. Follow any corporate graphic standards for the mark as designated by your company.
7. Do Not Use Marks In The Possessive
Because trademarks are not nouns, they should not be used in the possessive.
Correct: The fine quality of PAMPERS disposable diapers.
Incorrect: PAMPERS’ fine quality.
8. Do Not Use Marks In The Plural
Because trademarks are not nouns, they should not be used in the plural form. Note, however, that some trademarks actually end with “s” such as KEDS or Q-TIPS. For example:
Correct: Take some pictures with KODACOLOR film.
Incorrect: Take some KODACOLORS.
Correct: Buy two SEVEN-UP soft drinks.
Incorrect: Buy two SEVEN-UPS.
9. Police Your Mark
When you discover that others are infringing or misusing your mark, you need to take action to halt such misuse. Here, too, experienced intellectual property counsel can help you. If you do not act to halt such infringement, you may jeopardize your rights to your mark.
A company’s trademark or service mark is valuable intellectual property. Properly using and policing your mark is essential in protecting what may be your company’s most valuable asset – its good name.New Products: If you are working on the development of a new product or service, consider unique, creative, distinctive marks rather than those that merely describe the product or service. The more distinctive the mark, the better it will identify the product or service in the marketplace and the easier it will be to protect. The proposed mark must not conflict with another mark already in use by another person or company in connection with similar goods in a given geographic area. When you are ready to check a proposed mark or marks, please contact an attorney to determine availability.
Applications for Registration: It is usually a good idea to register a mark with the U.S. Patent and Trademark Office and similar authorities in relevant countries. To apply for registration of a mark, you will need to provide your lawyers with the date it was first used in interstate or international commerce on goods or in connection with rendering services (e.g., the first ship date of software bearing the mark in a standard commercial transaction) and with a copies of packaging, labels, or product bearing the mark. It is also possible (and advisable) to file an application for a mark that the company intends to use, but has not used yet.
Using TM, SM, and ®: If a mark is registered, use ® as a superscript following the mark. Alternatively, one of two acceptable longer notices may be used as a footnote to a registered mark. These notices are: “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” Different countries have different marking requirements, and in some countries failure to properly mark one’s goods can result in the inability to enforce one’s mark against infringers. Please contact an attorney if you need to know the marking requirements of a specific country.
If an application for registration of a mark is pending, or if you claim rights in a mark but have decided for some reason not to register it, use the superscript TM (for trademarks) and SM (for service marks). Use these symbols with, at least, the first or most prominent use of a mark in each main section of a print or electronic publication. Although use of the TM and SM symbols has no bearing on whether the term or logo is properly considered a trademark or service mark, their use helps to deter potential infringers and to make clear that the company claims the term or logo as a trademark.
It is also appropriate to include a statement in each publication along the following lines: “ABC is a registered trademark, and XYZ is a trademark of LMN Corporation.”
Do not use a trademark symbol with your company’s trade name. Remember to properly mark and use trademarks belonging to other companies. In some cases, it may also be necessary to obtain permission to use other company’s marks.
Using marks in text: Trademark rights can be lost if marks are not used properly. In press releases, advertisements, labels, packaging, brochures, marketing materials, and other print and electronic publications, please follow these guidelines.
• Use marks as adjectives, followed by the generic name of the product or service that the mark identifies, e.g., “NIKE® sneakers” or “KLEENEX® tissues.” Do not use marks as nouns, e.g., “KLEENEX® is exceptionally strong.” On occasion, the generic term may be omitted, as in repetitive uses of a mark in a single piece, but always use the mark in combination with the generic term at the beginning of a piece and again at subsequent significant points.
• Similarly, do not use marks in possessive form (e.g. “XEROX’s® image quality is outstanding”); instead, say “XEROX® copiers make outstanding high quality images.”
• Make a mark typographically distinctive, i.e., use it in bold or italic type, with an initial capital letter or all capital letters to distinguish it from the generic noun it describes and from other words in the text.