Companies invest heavily to obtain trademarks that are to be used with their products or services. The investment of time and money into a comprehensive branding strategy to build goodwill may take a significant hit if the respective trademarks are not properly used and noted. Unfortunately, this behavior of misuse may only be discovered when the time comes to file appropriate documents with the trademark office at the five-year use declaration date, upon the ten-year renewal anniversary or worse, if your mark is challenged post-registration. This article serves to suggest best practices regarding a company’s use of its trademarks, how to make sure others are using the marks properly and creation of proper specimens to evidence your company’s appropriate ongoing use of marks.
Congratulations! Your company just received the Registration Certificate for your new trademark. Now what do you do? A best practice would be to create an instructional guideline on its proper use and share this with marketing, sales and communications departments. Here are some of the points that should be discussed:
1) Always use the trademark as an adjective, e.g., KODAK film, KLEENEX tissues
2) Never use the trademark as a noun, e.g., “Tic tacs” in place of TIC TAC candies
3) Never use the trade mark as a verb, e.g., Googling” a name rather than performing a GOOGLE website search
4) Never change the trademark to plural form, e.g., “Fig Newtons” instead of FIG NEWTON cookies
5) Never use the trademark in possessive form, e.g., “Wrangler’s” jeans instead of WRANGLER jeans
Additional tips to include in the “use” guideline are:
1) Always distinguish the trademark from the surrounding text. Techniques for distinguishing the mark include use of the ® or ™ super script symbols; use all capital letters for the mark; use a bold, italic or underlined font or place the mark between double quotation mark.
2) Use the mark consistently. For example, always include with a space or without a space, establish consistent use of hyphens. An example of this is COCA-COLA beverages, not COCACOLA beverages.
The guideline should provide directions on proper trademark marking. Marking is the acceptable or legally allowed designation to identify a word, logo, slogan or design as a trademark. How is this accomplished? If the mark has been registered with the U.S. Trademark Office, the ® symbol should be placed to the upper right of the word or design. Please remember, the ® symbol can only be used after a Federal Registration Certificate has been issued. Alternative markings for registered marks may include using the words “Registered, U.S. Patent and Trademark Office” or the abbreviated “Reg. U.S. Pat. and Tm Off” next to the mark or noted as a footnote. If the trademark has not gained registration, one should use either the super script ™ (for use with trademarks associated with goods offered for sale by a certain source) or SM (for use with service marks that are associated with services being offered for sale by a certain source). These two designations should be used when a company begins to use the trademark or service mark in commerce, but before it is registered. It is good practice to use these notations immediately, as this provides notice to the public that the owner is using these marks as a trademark and intends to claim trademark rights to the respective word, symbol or logo. It is very important in the U.S. to utilize the ® symbol when permitted, because this will be deemed as providing proper notice to third parties of the existence of your registered trademark. Failure to provide this notice may limit one’s ability to collect any money damages or recover legal costs, if a lawsuit for infringement has been commenced.
Additional reasons exist for marking a company’s trademark. These include: 1) Identifying the mark as being registered; 2) directing the consumer to the identity of the owner and reinforcing the consumer’s associate of the mark with the supplier/owner of the goods or services; 3) distinguishing the trademark from adjacent text or graphics; and 4) distinguishing the trademark from other marks, if used together on packaging, products or collateral marketing/sales materials.