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Use it or Lose It - Proper Trademark Usage Important
to Every Business
By Bruce A. Ramsey, Attorney.
Nowadays, almost every business has a
trademark or service mark. Your mark is hopefully 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. When used, the brand
should always appear in small (do you mean smaller, lowercase or
less prominent?) print. 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
initial caps with quotation marks. 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 would
be in the same type as the rest of the document. For example:
Correct: FANFARE service -or- Fanfare
service -or- Fanfare service -or- Fanfare service
Incorrect: fanfare service -or- Fanfare
Service
5. Use 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.
Conclusion
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.
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- Copyright ©2002 Morgan Miller Blair, Inc.
- Bruce Ramsey is the founding partner of
Ramsey Law Group in Lafayette, CA. He can be reached at
925-284-2800 and by email at
bramsey@ramseylawgroup.com
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