By J. Gary McDaniel, TCV Growth Partner - The proper use of trademarks can provide a clear brand differentiation. But what comprises proper use? In this blog post, I explore the proper use of trademarks to help those interested in filing for a “mark” understand how and where to use a trademark and some of the dangers to avoid.
Give Notice of Your Trademark Rights
Providing public notice of trademark rights is important, for registered and unregistered marks alike. The failure to display proper notice of registration, or notice of unregistered trademark rights, is a common mistake, yet the easiest to correct and avoid. The appropriate form of notice to employ depends on whether the mark is registered with the United States Patent & Trademark Office ("PTO").
There are three ways to give notice that a mark is registered with the PTO:
Use the symbol, "®;"
Use the legend, "Registered, U.S. Patent and Trademark Office," or
Use the abbreviation, "Reg. U.S. Pat. & Tm. Off."
Failure to employ one of these notices, each time a federally registered mark is used, may hinder the prosecution of a trademark infringement action, by allowing the wrongdoer to claim "innocent infringement" as a defense. If proper notice is not employed, and displayed prominently, the infringer may claim ignorance of trademark rights, and damages available to the trademark owner may be reduced.
In other countries, permissible notice forms differ from those used in the above-examples. Consult qualified trademark counsel for the form appropriate to your target country, before preparing labels, advertisements, packaging, or displays with trademark information.
Notices of Rights in Unregistered Marks:
The registered symbol, "®," the legend "Registered, U.S. Patent and Trademark Office," and the abbreviation, "Reg. U.S. Pat. & Tm. Off.," should be used only on, and in connection with, marks registered with the PTO. The use of these notices on unregistered marks is a crime, punishable by fines and/or imprisonment.
Technically, providing notice of rights in unregistered marks is optional, but the prevailing wisdom is that such notice should be employed. Such notice is consistent with the rationale underlying proper trademark use, and enhances a mark's source-identifying function. Notice of rights in an unregistered mark, consists of one of the following notations, usually appearing above, and to the right of, the mark in which rights are asserted:
(TM) for an unregistered trademark; and,
(SM) or (TM) for an unregistered service mark.
Use Your Mark As An Adjective
Marks are adjectives, and should be used only as such. Marks never should be used as nouns or verbs. Nor should marks be pluralized, or used in the possessive form. Non-adjectival uses of marks, over time, can result in genericness, or a finding of unintentional abandonment -- even when such use emanates from the public, rather than a trademark owner. For this reason, the owners of marks such as Coke®, Kleenex®, Xerox®, and FedEx®, expend considerable efforts to educate the public concerning the proper use of marks.
One way to ensure that a mark is used in proper adjectival context, is to follow each use with the generic noun for the product identified. For example, generic terms for the trademarked products and services mentioned in the preceding paragraph, are "soft drink," "facial tissue," "photocopier," and "overnight courier service." Using these terms after the marks, makes them adjectives, rather than nouns.
Using the word, "brand," after a mark, and before the generic product name, further guards against non-adjectival use.
Use Your Mark Distinctively
Marks should be used in ways that distinguish them from surrounding text. The use of trademark notices, generic terms, and "brand," in connection with marks, helps differentiate marks from generic terms. However, marks also should be CAPITALIZED, underlined, italicized, placed in "quotation marks," or depicted in boldface type, whenever they appear in printed or electronic media. The goal is not just to avoid genericness and abandonment, but to create a distinct commercial impression in the minds of consumers regarding a mark, and the products, services, and business it represents.
Combining a logo with a word mark, can enhance, or create, a distinctive commercial impression, and sometimes can distinguish two similar word marks from one another. In some cases, where a relatively descriptive word mark is selected, registration may be obtained by joining a distinctive logo with the common or partially-descriptive term. Such registrations generally do not cover the descriptive portion of the mark, but protect the logo, and the mark viewed as a whole. The strongest marks are those that are distinctive, and those trademark owners use distinctively.
Affix Your Mark to Goods and Services
Not all product nicknames, business slogans, and broadcast advertising phrases are trademarks and service marks. In order for trademark rights to be created and maintained, a mark must be affixed to a specific product, or used in the provision of a particular service. Marks cannot discharge their source-identifying duties, if they cannot be seen on products, or with services.
Trademarks are "affixed" by applying them directly to a product, to containers in which the product is packaged, or to tags or labels attached to the product. Service marks are "affixed" by using them in signs and other advertisements offering the services, and on letterhead and invoices through which the services are provided. As a general rule, a mark is not a mark until it has been affixed!
License With Care
Trademark law frowns upon "naked licensing." Fortunately for trademark owners, "naked licensing" is not as fun as it sounds. "Naked licensing" occurs when third-parties are allowed to use a trademark without restriction; when the quality of goods or services provided under a mark by third-parties is not controlled, or when rights in a mark are assigned, in whole or part, without the goodwill of the business symbolized by the mark. Naked licensing severs a mark from its source-identifying function, and thus results in the loss of trademark rights through abandonment.
Authorized third-party uses of a mark should be licensed, and all licensing agreements should be written carefully, signed, and enforced. The agreement must set standards concerning the licensee's use of the mark, and the quality of products or services with which the mark will be used.
Some trademark owners omit these formalities, due to the nature of their relationship with a particular "licensee." A parent company may not see the need to license trademarks to its subsidiary. A business owner may not realize the importance of licensing marks to a nephew, opening a branch of the business in another locale. What each fails to consider is that trademark law is not based upon an owner's right to use a mark in any manner she wishes. Trademark law is designed to protect consumers from confusion regarding the source or origin of products and services. If the parent company or franchise owner engages in conduct that makes such confusion likely, trademark rights may be abandoned -- perhaps even to the subsidiary or franchisee! Naked licensing, and other informal licensing arrangements, contribute to such confusion, and are not good for marks.
TCV Growth Partners are not attorneys, but we can put you in touch with an experienced Intellectual Property attorney if needed. Feel free to contact me at email@example.com