Trademark Use Guidelines
Trademarks are used to identify the source of the associated good or service, and ultimately to imply the quality of the good or service based upon the reputation of the source. Therefore, it is very important to use marks in proper fashion. The more descriptive a mark, the more important it is to use the mark properly. Through proper use of a trademark, you can retain exclusive rights to use the mark indefinitely.
Please note: These guidelines are formed on United States federal trademark law and practice. Other conditions may apply for use of trademarks in other countries.
A Guide to Using Trademarks
Use the proper notice of trademark rights
If you have a federally registered trademark, identify the mark as such by use of the ® symbol when it is used on or in connection with the goods or services covered by the registration. Note, however, that registration does not occur until the United States Patent and Trademark Office (“PTO”) issues a registration certificate.
If you do not have a federal registration for your mark, but are using the mark in commerce, you should use the TM or SM symbol after the mark in order to indicate that you are claiming exclusive rights in the mark. You may use the TM or SM symbol whether or not you have applied to register the mark. The ™ or SM symbol can also be used in conjunction with a mark if the owner of the mark has applied for federal registration in the PTO, regardless of whether the mark is being used in commerce. Only use the symbol when the mark is used as a trademark; if the mark is used merely as your trade name or to refer to the company, this does not constitute use as a trademark and the symbols should not be used.
Examples of trademark symbols are below.
It is also advisable to include a written notice in your marketing materials, packaging, websites, documentation, etc. that summarizes the trademarks that you own and that also indicates you are not claiming any rights in any third-party trademarks that may be referenced.
Always use the trademark as a proper adjective
The trademark should be followed by the generic name of the product or service. Do not use the trademark as a noun or verb, or in the plural or possessive form. Using the trademark as a noun to indicate the type of product or service increases the risk that the public may begin to equate the mark with the type of product or service, rendering the mark generic. Products that are the first of their kind often run the risk of the public using the product’s brand name as the generic name for the product.
|Proper Usage||Improper Usage|
|ServiceNameSM services provided by ABC Company||ABC Company is the leading provider of ServiceName.|
|We prefer Kleenex brand tissues||We prefer using Kleenexes|
Use the trademark distinctively
It is also generally advisable to set the mark off from the surrounding text. Differentiate the mark from the rest of the text by use of CAPITALIZATION, italics, boldface type, different fonts, quotation marks, etc.
Use the trademark consistently and continuously
Casual, sporadic or transitory use will not create rights in the mark. Each time you use the mark in a substantially different form, you create a new trademark. Establish guidelines for the use of the mark that include acceptable font style, font pitch, color, stylized representation of logos and taglines, and the like.
Monitor your trademark
Improper use by third parties can lead to a mark becoming generic and the loss of trademark rights. Therefore, companies should regularly monitor and renew use by third parties of their trademarks. We can suggest “watch” services to monitor applications, publications and/or registrations of similar marks as well as common law use of marks, such as on the internet and in domain names. If an infringement or improper use is identified, the trademark owner should take appropriate action to address the unauthorized use. Failure to take action and allowing the infringement to continue can result in loss of trademark rights.
Conduct inventories of your trademarks
An internal audit that matches the goods and services with their marks will help ensure proper use of the marks. Repeat the internal audit on a regular basis as your portfolio of marks increases.
Conduct availability searches before adopting and using a mark
A mark will be denied registration and protection if it is “confusingly similar” to other marks that are registered; you also may be subject to court action by the owner of a similar mark with prior trademark rights.