Guide to Trademark and
Service Mark Use
By Evan Smith
Your trademarks and service marks are
important corporate assets, and they must be used properly to avoid losing control over
their use. Follow these guidelines to properly establish, preserve, and protect your
Identifying Your Marks with Symbols
Always identify your marks with appropriate symbols to indicate their proprietary nature.
The circle-R symbol (®) is used when you have an issued federal registration for the mark
(not just a pending application). The superscript TM (trademark) and SM (service mark)
symbols should be used with unregistered or state-registered marks. If youre selling
a tangible product, use TM; if youre providing services, use SM.
To further notify others of your ownership
claim, add a statement at the bottom of the page in documentation, advertising, and other
places where the mark appears such as "MYTRADEMARK is a trademark of
MYCOMPANY" or "MYTRADEMARK® is a registered trademark of
Marks should be visibly distinguished from ordinary advertising and documentation copy.
The mark can be presented in ALL CAPS, quoted "Initial Capitals," or Initial
Capitals. Different colors, fonts, and type styles (such as italics and boldface) can also
be used to distinguish the mark.
Proper Use in Context
The way you use marks when talking about your products or services is important. Your mark
is not a shorthand reference for the goods or services you provide. It is an adjective
that identifies your particular brand of those goods or services.
Thus, your marks should be used as
adjectives that modify a generic noun defining the goods or services.
- GT LAW SM legal services
- Kleenex® brand facial tissues.
Providing the generic term is essential
when you introduce the mark in advertising copy, and its safest to provide the
generic term every time you use the mark in a sentence. Trademark or service mark status
can be further emphasized by using "brand" after the mark.
Never use marks as nouns or verbs, or they
may be perceived as a generic term for the product or service, rather than as your brand
name. Aspirin, escalator, cellophane, and thermos were once brand names, but through
misuse they became generic.
If your mark suggests a feature of your
product or service, do not use it in a sentence to describe that feature. Using a mark
descriptively undermines your claim to ownership, because marks which are descriptive
cannot easily be registered or protected.
Always use the mark in the same form.
Dont change the mark in an effort to make it plural or singular, such as by adding
or removing an "s"instead, make the generic descriptor singular or plural as
needed. Similarly, dont add an " s" to make a mark possessive, or
remove an " s" from a mark that is in a possessive form, such as
Where to Place the Mark
You are free to use your marks in a variety of ways for promotion and in advertising.
However, in addition to desired promotional uses, be sure to regularly use the mark in
connection with the goods or services in a way that establishes rights and supports
federal registration applications.
Trademarks should be placed on the goods,
or on attached labels, tags, or packaging. Using a trademark in advertising, but not on
the product, will not support registration.
Service Marks should be used in advertising
materials promoting the service, at a time when it can be legitimately delivered to a
Use of Your Marks by Others
Be careful when allowing other companies to use your marks. If you allow others to use
your trademarks or services marks, you must retain at least nominal authority to control
the quality of the goods or services they provide. Licensing without control ("naked
licensing") forfeits your rights in the mark.
Also, watch how strategic partners
(distributors, resellers, etc.) use your marks. Placing your mark next to their company
name, or otherwise creating the impression that it is their mark, can create consumer
confusion and weaken your ownership claim. A clear statement that "MYTRADEMARK is a
trademark of MYCOMPANY" may be needed to protect your rights.
Copyright © 1997 Greenberg
Traurig - All rights reserved. Used with permission.
Please read the IP
Resource Center Ground Rules.