Trademark Use Guidelines
Trademarks are used to identify the source of goods or services, and ultimately to imply the quality of the good or service based upon the reputation of the source. Improper use or management of trademarks can lead to loss of trademark rights, diluted trademark rights and reputational damage. Therefore, proper use of a trademark is very important and consistently doing so can enhance your rights to use the mark as well as your company's overall value.
A Guide for Proper Trademark Use
Use the proper notice of your 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 have a federally registered trademark, failure to use the ® symbol can have significant consequences in an infringement action.
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 (service mark) 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 even if you have not applied to register the mark with the PTO. Although use of the TM or SM symbols does not have legal significance, it is still advisable to show the public that you are claiming common law trademark rights in the mark.
Only use the appropriate symbol when the mark is used as a trademark (i.e., to indicate the source of a good or service); if the mark is used merely as your trade name1, this does not constitute use as a trademark and the symbols should not be used (more on this below). You do not need to use a symbol after every instance of the trademark but should use the appropriate symbol in the first instance the mark is used and when the mark is prominently displayed.
Trademark Symbol Usage Chart
|Registered with PTO||Not Registered with PTO|
It is also advisable to include a written notice in your marketing materials, packaging, websites and documentation 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. Such notice could take the form of: “[MARK] is a trademark of [Company Name] and is registered in the U.S. Patent and Trademark Office.”
Use the trademark as an adjective
The trademark should be followed by the generic name of the product or service whenever possible (unless the mark is being used as a trade name to refer to the business itself). Use of the trademark as a noun or verb to indicate the type of product or service being offered may result in “genericide,” rendering the mark generic and susceptible to loss of trademark rights. Perhaps the most famous example of genericide is Aspirin, which was formerly used as a trademark in connection with acetylsalicylic acid, but due to improper use has been declared generic in the United States. Products that are the first of their kind, like Aspirin, often run the risk of the public using the product’s brand name as the generic name for the product and thus proper use becomes even more important. If you haven’t already seen it, we recommend taking a look at this video published by VELCRO asking people not to use “Velcro” as a noun when referring to the actual product so that the company can protect its brand (and avoid genericide).
Along the same lines, it is best to avoid using the plural or possessive form of the trademark. Doing so turns the trademark into a noun and therefore is unadvisable.
|Proper Usage||Improper Usage|
|Google search engine||Google it!|
|Kleenex tissues or Kleenex brand tissues||Stuffy nose? Grab a Kleenex.|
Separate the trademark from surrounding text
In order to make it clear to the public that you are using a word or phrase as a trademark in text, it is advisable to visually set the mark off from any surrounding text. For example, highlight the mark by using CAPITALIZATION, italics, boldface, different fonts, quotation marks, different colors or a combination of these. Another good way to separate the trademark from surrounding text is to use the appropriate trademark symbol (TM, SM or ®) immediately following the trademark and before any subsequent text.
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 company guidelines for the use of the mark that include acceptable font style, color, logos and taglines. Ensuring consistent use of your trademarks becomes increasingly important when you are licensing or permitting use of your trademark by third parties.
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 for any third party use of their trademarks and take appropriate action in response. We can suggest “watch” services to monitor applications, publications and/or registrations of similar marks in the PTO as well as common law use of marks, such as on the internet and in domain names. If an infringing or improper use is identified, the trademark owner should take appropriate action to address the unauthorized use, as failure to take action can result in loss of trademark rights and reputational damage.
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 for use in connection with similar goods and services. Additionally, adopting and using a mark that infringes on someone else’s trademark rights could subject your company to costly litigation. To avoid these pitfalls, we always recommend conducting a search before adopting and using a mark.
Stay on top of renewal deadlines
If you secure a trademark registration with the PTO, make sure to stay on top of any future deadlines for additional filings, as missing a deadline can cause the registration to be cancelled. Some deadlines are different depending on the type of trademark application you file, but once a mark is registered, a Section 8 Declaration of Use must be filed between five and six years after the date of registration. Thereafter, a subsequent Section 8 Declaration of Use and a Section 9 Renewal must be filed every ten years.
Please note: This guide is formed on United States federal trademark law and practice. Other conditions may apply for use of trademarks in other countries or for state registered trademarks. This guide is not meant to be exhaustive.
Contact Trevor Schmidt or Morgan Maccherone if you have any questions or need assistance with your trademark portfolio.
1Trade names, which are often confused for trademarks, refer to a company or business itself, and have less stringent use requirements than trademarks. A single word may function as both a trade name and a trademark in different situations.