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The Proper Use of Trademarks - Use it (Properly) or Lose It
By Lloyd J. Jassin


The success of a trademark rests in the hands of many people.  While registering a trademark is an important step in developing a brand, just using your trademark commercially is not enough.  Under U.S. law for a trademark to remain valuable, it has to be used properly.  For example, systematic misuse of a trademark can result in the term becoming generic.  A generic terms is an apt term, or a term that has become part of everyday language.  Words such as "Aspirin," "Cellophane," and "Elevator" slipped into the public domain because of improper usage. Similarly, "Band Aid," "Kitty Litter," and "Xerox," have become -- for many -- the preferred way to refer to a group of products.  When a word, or phrase, is commonly used to identify a group or class of products, it is in danger of ceasing to serve as a trademark.

Trademark owners need to police the way their trademarks are used.  Here are some helfpul guidelines on how to maintain your trademark.

Trademark Grammar 101

Use trademarks are adjectives not nouns.  Therefore, a trademark should be used with a generic or common descriptive term.   Ask for a Kindle ebook reader -- not a Kindle.  Xerox is a trademark for document copying, not a descriptive term for photocopying. When a character in a novel slips into his convertible and lowers the top, he should reach for his Ray-Ban sunglasses, not Ray-Bans.  If you are a writer, as a courtesy to the trademark owner, consider using trademarks with the generic terms to which they apply at least once in your writing.  If you don't, likely, nothing bad will happen. 

Don't add an "s" or an "ing" to a trademark.  Don't ask for Band-Aids.  It's very wrong -- from a trademark perspective.  It genercizes the brand.   

Never use a trademark as a verb.   "Red Hat your entire network" is bad.  "Set up your entire network using the Red Hat Linux operating system" is good. 

Never use a trademark in the plural.  "Where are your Lonely Planets?" is incorrect.  "Where are your Lonely Planet Travel Guides?" is the proper way to refer to the travel guide series. 

Trademarks Must Stand Out

Since trademarks are used to distinguish products and services from one annother, it is important to set trademarks apart from the text adjacent to it.  Distinguish trademarks online and in print by using an initial capital letter, or setting off the entire mark in CAPS, or by using italics or "quotes" to make the word or phrase stand out.

Trademark Notices

If you are a trademark owner (or a trademark licensee), it is also important to use the proper form of trademark notice.  If the mark is an unregistered trademark, use the little superscript "TM" in close proximity to the mark.  If the mark is registered with the United States Patent and Trademark Office, you may use the little "R" in a circle.  And, if you are claiming ownership of an unregistered service mark, you may use an small superscript "SM" instead of a "TM" with your mark.  

Normally, use the trademark notice in conjunction with the first and most prominent use of the mark in advertising, packaging and promotional materials.  While trademark notices are not legal requirements, they have legal significance.  For example, it puts people on notice that you are claiming trademark rights.   As such, the display of a trademark notice is the equivalent of a "No Tresspassing" sign.  If you are concerned about trademark notices "mucking up" the design of a label or  package, or otherwise impinging on the aesthetic appeal of your marketing materials, consider using the words "The name XXXXX and the XXXXX logo are registered trademarks of [e.g., The Old New Lompoc Company]" in legible type in the advertisement or on the label or packaging.

Policing Your Trademark

If you determine that someone is misuing your trademark, consider sending them a friendly letter correcting their trademark grammar.  Unfriendly letters should be reserved for trademark infringers.  Since school begins at home, familiarize your employees, especially the advertising and public relations staff on proper use of your marks.  Consider creating a style sheet containing approved logos, logo GIFs, download link logos, etc.  Share the style guide with your trademark licensees.  Consider posting it to you website.  This will help ensure that your trademarks are used consistently and properly on products and services, on packaging, promotional materials, advertising, Web sites, and other collateral marketing materials.  

Naked Licensing = Loss of Trademark Rights

Another form of policing concerns monitoring or overseeing the manner in which your mark is used by licensed users.  While beyond the scope of this article, you can be stripped of your trademark rights if you don't control the quality and type of goods (or services) to which your mark is affixed.  If there is no quality control language in your license agreements, it's considered uncontrolled or "naked" licensing.  Naked licensing is bad because trademarks are symbols of quality.  They are source indicators.  If you don't exercise control over the quality or the type of goods on which your mark appears, you are deceiving the public.  Trademark law protects consumers from being deceived; whether the deception is fostered by the owner of the mark, or the owner's competitors.     

(c) 2011. Lloyd J. Jassin. All Rights Reserved.

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DISCLAIMER: This article discusses general legal issues of interest and is not designed to give any specific legal advice pertaining to any specific circumstances. It is important that professional legal advice be obtained before acting upon any of the information contained in this article.

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