Netpreneur Exchange.. Intellectual Property Resource Center - Guide to Trademark and Service Mark Use

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 rights:

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 you’re selling a tangible product, use TM; if you’re 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 MYCOMPANY."

Typographic Presentation
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.

Examples:

GT LAW ^SM legal services
Kleenex® brand facial tissues.

Providing the generic term is essential when you introduce the mark in advertising copy, and it’s 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. Don’t 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, don’t add an " ’s" to make a mark possessive, or remove an " ’s" from a mark that is in a possessive form, such as McDONALD’S ®.

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 consumer.

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.

Please read the IP Resource Center Ground Rules.