Trademark Use

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.

Using the word, "brand," after a mark, and before the generic product name, further guards against non-adjectival use. 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.

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.

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.

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.

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.

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."

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.

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. As a general rule, a mark is not a mark until it has been affixed!

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.

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 preceeding paragraph, are "soft drink," "facial tissue," "photocopier," and "overnight courier service." Using these terms after the marks, makes them adjectives, rather than nouns.

The appropriate form of notice to employ, depends on whether the mark is registered with the United States Patent & Trademark Office ("PTO").

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.