!8: Lanham Act Trademark Buy Now: January 2012

!±8± Use It or Lose It: Guidelines for Proper Trademark Use

Once obtained, trademark rights can last indefinitely. However, in order to protect and maintain these rights, a trademark owner must properly use their mark. It is important to remember that trademark rights are based on use. Thus, failure to use a mark properly or to prevent others from misusing or infringing a mark can result in an owner's loss of trademark rights. The following guidelines for proper trademark use apply to advertising, correspondence, promotional material, displays, labels, packaging, signs, web sites, and any other media that uses, discusses, or describes the mark.

A. Use Proper Trademark Grammar

The most important rule of grammar regarding proper trademark use is that a trademark should be used as an adjective, not a noun or verb. Using the mark as an adjective helps distinguish the mark from the generic term it modifies. After all, a mark is used to identify the source or brand of a product, not the product itself. It is important to follow this rule to prevent your mark from potentially becoming considered generic. Examples of proper use include: KLEENEX ®tissue; APPLE® computer; and JACUZZI® hot tub. Note that each mark (adjective) is used to modify the generic term (noun). In fact, since trademarks function as adjectives, they should always be accompanied by the correct generic name for the product or service.

Other rules of grammar important to proper trademark use include avoiding the use of a trademark in the plural or possessive form. When referring to more than one trademarked product, do not pluralize the trademark. Instead, use the plural form of the generic product to which you are referring. For example, it would be incorrect to say "Could you pass me some kleenexes so I can blow my nose?" The correct statement should be "Could you pass me some KLEENEX® tissues so I can blow my nose?" Likewise, trademarks should not be made possessive. Rather, the generic product name should be made possessive. For example, it is improper to use "I really like Febreze's fresh scent." The correct use of the mark should be "I really like the Febreze® air freshener's fresh scent."

B. Distinguish Your Mark

Trademarks should stand out from surrounding text. This helps to further distinguish the trademark from ordinary descriptive or generic terms. There are numerous ways to present a trademark to make it stand out. A non-exhaustive list of examples includes:

All capitals: VASELINE® petroleum jelly

Initial capitals: Kleenex® tissue

Quotation marks: "Channellock" ® pliers

Italics: Life Savers® candy

Boldface: Pizza Hut® restaurant

Use of the word "brand": Scotch® brand and transparent tape.

C. Identify Your Mark as a Trademark

There are several ways to indicate to the public that you are using your mark as a trademark or service mark. The most common way that trademark owner's put others on notice that they are using a mark as a trademark or service mark is by using the symbols TM, SM, or ®. The TM symbol is used to identify an unregistered trademark, while the SM symbol is used to identify an unregistered service mark. Use of the TM or SM symbol does not imply that a trademark application has been filed; it simply means that the term is claimed as a trademark. On the other hand, the ® symbol is used to identify a trademark or service mark that has been registered with the U.S. Patent & Trademark Office. Thus, the ® symbol should be used only in connection with a registered mark. Alternatively, there are other proper forms of notice for registered trademarks, including: "Reg. U.S. Pat. & Tm. Off." and "Registered in the U.S. Patent and Trademark Office."

It should be noted that use of a statutory notice is not required. However, to collect damages and profits in an infringement suit brought under the Lanham Act, statutory notice or the defendant's actual notice of plaintiff's registration is required.

D. Be Consistent

Trademarks should be used consistently. Variations on how the mark is presented should be avoided. Failure to use a mark consistently can result in consumer confusion or dilute the distinctiveness of the mark. On the other hand, using a mark the same way every time will enhance the distinctiveness, and thus, the consumer's recognition of the mark.

Conclusion

The guidelines set forth above are by no means inflexible. However, by following the rules of proper use it will be much less likely that a trademark is used improperly. Furthermore, adhering to these rules is likely to increase consumer awareness that a term is being used as a trademark. Thus, a trademark owner should ensure that their marks are properly used, or else run the risk of losing their rights.

DISCLAIMER

We hope you understand that we cannot possibly give accurate legal advice to all inventors in a brief article on intellectual property issues that should be considered when starting a business. Accordingly, nothing in the above is intended as specific legal advice to any person. Such legal advice can only be given by a qualified practitioner after a careful review of all the individual facts. We urge you to consult us, or another licensed professional, before you proceed.