All businesses, entrepreneurs, the media, advertising agencies, writers and bloggers use a number of trademarks and service marks daily as they create articles, features, and marketing collateral. Trademarks and service marks can be composed of words or phrases identified with a business — or they can be wordless graphic designs or logos — or combinations of both. The essence of a trademark (and what distinguishes it from other identifiers, such as a domain name) is that it describes a relationship: the relation of particular products and/or services to a specific commercial source. Trademarks and service marks may be registered with the US federal Patent and Trademark Office (USPTO) — or protected by state trademark registration — or, under common law protection, simply by ongoing use.
How does trademark law affect the right to use a trademark?
State and federal trademark laws entitle the trademark owner to protect trademarks and service marks against others who use deceptive or fraudulent imitations of the marks (but not parodies, see below), or who use the marks improperly in the media. US federal registration is the best protection a trademark owner can have for trademarks and service marks. In order to preserve the ability to enforce federal and state trademark and service mark rights, a trademark owner must be very careful to always use the trademarks and service marks in a manner which identifies them as marks and which distinguishes them from ordinary descriptive words. Improper usage can destroy a trademark or service mark — this is frequently called genericide. This FAQ (guide to Frequently Asked Questions) contains legal guidelines on proper trademark and service mark use, for mark owners as well as for the thousands of writers, bloggers, advertising agencies, and members of the media who design, use, and discuss trademarks and their related products and services every day.
What’s the appropriate way to use a trademark symbol online in print and online?
There are two types of trademark notices or symbols. When you use this notice, you are providing information to the general public that there is a trademark or service mark claim, and possibly a registration.
Which notice to use depends on the type of protection applicable to the trademark or service mark. Trademarks and service marks can be registered in either the federal or state trademark registration systems, or both. Or, they may not be registered at all — many common law trademarks exist through nothing but the mark owner’s adoption and continuous exclusive use on its products and/or services — although registration is always legally preferable to ensure that such protection is not left up to chance and will be legally effective to enforce. If a trademark is federally registered (in other words, it is registered on the Principal Register or Supplemental Register at the USPTO), the mark owner and the media should use the symbol ® at the shoulder or toe (superscript or subscript) of the mark.
If a trademark or service mark is registered in one or more of the fifty US states — OR if a trademark or service mark is not registered and is a common law trademark or service mark — OR if you are a trademark or service mark owner and you have applied for federal registration but not yet received it — the appropriate symbol to use with the mark is the two letters TM or SM. These symbols should also be used at the shoulder or toe (superscript or subscript) of the mark.
Most word-processing software has a way to make these special notice symbols, either by directly accessed them through computer keyboard combinations, or because they are in special tables of symbols which can be inserted into documents by a couple of actions, usually via a drop down menu. In HTML, there are special codes which will reproduce the symbols ‘®’, ‘™’, and ‘℠’.
As an alternative, a trademark or service mark may be designated in text or type by using an asterisk ‘*’ after the mark, and by dropping a note to the bottom of the first page or advertisement with the note text indicating that “MARKNAME is a [registered] trademark [or service mark] of COMPANY.”
Federal trademark and service mark registrations only apply to the products and/or services actually listed on the federal registration. However, trademark or service mark rihts can always be claimed for goods and services upon which the mark is actually being used, but for which registration is pending, or where registration has not been pursued. An unregistered claim is still a valid trademark claim and a notice needs to be added to notify the public of the trademark claim.
How do I know whether a trademark or service mark is registered or not?
Owners, advertising agencies, promoters, publicists, writers and bloggers should take care to use the R-in-a-circle symbol ® on a trademark or service mark only for the classes of products or services actually registered. A mark owner who uses the R-in-a-circle ® symbol on packaging or in print or online without a federal registration is committing fraud and misrepresentation.
Obviously the mark owner should know whether the mark is federally registered or not. What about advertising agencies, publicists, art directors, writers, bloggers and members of the media? The answer is, before committing something to print — when in doubt, check it out. The best place to do this is with an online search of the Principal Register and Supplemental Register at the USPTO. This search is relatively easy and free of charge.
What if I am licensing my trademark on t-shirts, towels, paper goods and other promotional merchandise?
What if I am an artist who wants to license my artwork on several types of giftware and household goods?
Using a trademark notice under a legal branding strategy adopted prior to product rollout is critically important where a mark owner is commercializing a designer name brand or graphic logo which serves as the value-added for a line of products or services.
This area of trademark use is frequently called lifestyle branding. Some excellent examples of the raw commercial power of lifestyle branding can be found in Sanrio’s billion-dollar-per-year merchandising of HELLO KITTY® and BADTZ-MARU® and other trademarks over their wide variety of well known character-products — and, of course, the equally ubiquitous DISNEY® and STAR WARS® themed merchandise. Another huge industry for aggressive trademark and service mark protection programs is the designer clothing and fashion industry. Designer clothing derives most of its market value from the name association and not from the raw materials and construction of the items themselves. Popular examples of these are GUESS®, JUICY COUTURE® and GUCCI®. Yet another industry which is leveraging the power of trademark and service mark protection is fine artwork and crafts. Artists such as ANNE GEDDES® and LAUREL BURCH® have taken thematic artwork and crafts and created commercial licensing empires.
All of this economic activity is only possible through comprehensive branding, merchandising and licensing campaigns — and these in turn are only possible through a comprehensive legal program emphasizing aggressive trademark and service mark registration and protection prior to mass marketing and distribution, and including active policing and enforcement of correct trademark and service mark use by business, by the public, and in the media.
If you are a trademark owner and you are selling or distributing merchandise where the value of the item primarily comes from the fact that your mark is on it — you must be sure to use the appropriate notice at all times to discourage “knock-off” merchandising, and you must actively police uses of your mark in the media, to avoid incorrect use, dilution of trademark, and genericide.
For a national or international marketing and distribution campaign which emphasizes lifestyle items, designer brands, or artwork or character licensing, a protection program involving multiple federal trademark registrations is essential — the later this is undertaken, the more expensive it will be to effectively stop knockoffs and other forms of unfair competition. Mark merchandisers can easily lose control of a name, logo or image once it gets into the public’s hands without notice or other designation of trademark rights.
How should a trademark be used in a paragraph of text?
If you are going to refer to a trademark in the body of a paragraph of text, using a different font, type style or case is the best way to highlight and accentuate a trademark or service mark and distinguish it from ordinary descriptive text. If the mark is registered as a logo or “design” mark and thus includes fancy graphics or printing—use the typeset design as much as possible, as long as it is not disruptive or visually distracting. At a minimum, mark owners, the media, advertising agencies, writers and bloggers should always refer to a mark in solid upper case letters when writing about or referring to the mark or the underlying product referenced by the mark.
Should I use the trademark standing alone or in combination with other words?
The clearest and least ambiguous use of a trademark or service mark when referring to the product or service, is to surround the trademark itself with lots of word context. According to most style manuals, a mark owner, creative director, art director, writer or blogger should avoid using a trademark standing alone, with no other words, as a shorthand for the thing itself. On the other hand, it is appropriate when referring to the trademark itself as a trademark to use only the trademark word, phrase, or logo (ie, for purposes of discussing different trademarks, as in this article).
If you think about it, the in-combination-with rule makes sense, and is necessary to avoid confusion. Many trademarks and service marks are not unique made-up words like KODAK® and EXXON®. It is very common for trademarks or service marks to be in use simultaneously by a number of different owners who own registrations for different niches of products or services — like APPLE® for computers and APPLE® for Beatles records. The best way to refer to a product or service in text is to use the MARK in-combination-with something: the MARK serves as an adjective which modifies the generic or descriptive name of the products or services—KLEENEX® facial tissues or HEFTY® garbage bags.
What happens when a trademark is used alone?
Some trademark lawyers refer to this philosophically as “trademark entropy.” Kiwifruit, thermos, chapstick, crock pot, kitty litter, pogo stick, hula hoop, trampoline, pilates, jungle gym and Allen wrench are not-so-well-known examples of former trademarks that have lost their federal registration status because they became an everyday vocabulary word and no longer operated to designate a single source for the product or service in question. (Pilates was de-listed by the USPTO in 2000).
It’s more likely that a trademark is in danger of eventual genericide if it is a ground-breaking item that is the first to be successfully commercialized for an entirely new class of products. SEGWAY® and IPOD®— watch out!
Can I make a verb or a noun out of my trademark?
You should never use a trademark or service mark as a verb. A trademark is an adjective or adverb; it always modifies a noun or a verb but does not take the place of one. The USPTO uses evidence of popular use as a verb, to cancel existing registrations for genericide.
A trademark owner’s efforts at policing correct use of the mark, and in enforcing rights against improper usage, can make the difference in a cancellation action initiated by the USPTO. Companies such as Xerox Corporation, Google, Inc. and Kimberly-Clark Corporation spend millions each year in advertising and educational outreach to teach members of the media, creative directors, academics and the general public to “photocopy” instead of “xerox,” to “search” instead of “google,” and to refer to “facial tissues” rather than “kleenexes.”
Can I change the spelling of my mark, or hyphenate it, to achieve a new marketing approach?
You should check with your trademark attorney first. You may need to add a new registration for that particular version of your trademark. In general, whether you are an owner, an art director, a publicist, or a member of the media, you should never change the spelling of a mark or vary its punctuation. Plurals and possessives (’s) should never be added — they are only used if they are properly a part of the mark itself. Avoid “noun-ifying” trademarks. It’s easy to muddy up trademark protection by routinely adding suffixes such as “-ize” and “-ation” and making marks into everyday speech.
Can I use a trademark as a shorthand reference for a group of products?
See above. This might make sense if all the products come from the same source and are covered by a “family” mark — for example, GALLO® wines or HASBRO® toys.
However, many marks which were once registered became the victims of genericide by becoming the de facto term for an entire class of products. This includes elevator, escalator, aspirin, cellophane and celluloid.
I’m designing my packaging and marketing materials. Is it OK for me to save space by listing my company name and address directly below our trademark?
Using a mark which is also a company identifier (ie, company name or tradename) followed directly by your company address does NOT qualify as usage in the manner of a mark which is necessary to support a claim of trademark. When you use your mark ONLY in this way, the public and the USPTO presume that you are merely giving information about the name and location of your company — not that a trademark or service mark is being claimed.
The primary function of a trademark is to stand apart as a verbal or graphic identifier signaling to the public that your products and services are associated with a single source of quality, integrity and goodwill — not to identify a place of manufacture or offices. In letters, advertising, and other materials, trademark-like uses of the company name — use as an identifier of a product or service rather than as a company name — should always carry the appropriate notice symbol ®, ™, or ℠.
The opposite is also true: all references to your company name as a means of identifying your company—as opposed to identifying your products or services—should not be accompanied by a trademark notice.
Finally, if your trademark does not appear anywhere else on the product packaging other than in proximity to your company address, you will not have a valid specimen of mark use to provide to the USPTO as evidence, in order to succeed in obtaining a federal registration. If your product line is limited or if you are inexperienced in determining what is use in the manner of a mark, contact your trademark attorney. (If you do not have an attorney experienced with filing federal trademark registrations, you can contact me for a consultation.)
It’s not my trademark; it belongs to someone else. How can I and can I not use it?
Anyone authorized to sell trademarked products or services has the right to advertise by correctly using the trademarks and service marks and adhering to these general rules and any specific requirements of the mark owner. Many companies (such as Disney) have very specific style manuals which dictate how work marks, logos and characters must appear.
If you are a competitor, you are entitled to use a branded trademark in making a comparison claim (you need to make sure that the comparison claim is truthful and not deceptive under Federal Trade Commission requirements, but that’s another topic). So, if you are Pepsi, you can claim something along the lines of “9 out of 10 cola drinkers prefer PEPSI® over COKE® in a blind taste test” — but only if you performed the taste test and those were, in fact, the results.
If you service products which carry particular brands or logos, you are also legally entitled to use the trademark from the branded product to identify your expertise. You are not a competitor, and your usage will not confuse the public into thinking that you are in competition, merely by the trademark use. This is the classic example of “fair use” of trademarks. So, an auto mechanic shop can advertise that it services FORD®, CHRYSLER®, GMC® and VOLVO® cars. All of the “aftermarket” industries supplying parts compatible with a branded product make use of this fair use rule.
However, not every type of trademark use by a non-competitor is fair use. Use of someone else’s trademark or service mark in advertising must not be misleading or indicate a formal affiliation with the company, unless such a relationship truly does exist. Authorized licensees usually designate themselves as “authorized dealers” or “authorized service representatives” or say they are selling “official licensed products.”
Can I use a competitor’s trademarks in the metatags of my website or blog?
From a purely business-oriented, non-legal perspective, using a competitor’s trademarks in metatags no longer results in a search engine optimization (SEO) advantage, because the major search engines mostly ignore metatags. However, this was not always the case — in the early Internet days, this was an incredibly cheap, sly and effective strategy to piggyback on the goodwill and name recognition of a stronger brand, and drive traffic to a website so a potential customer might consider a company or business offering competitive products or services.
A number of US cases were decided on the metatags issue. Most cases reflected the vigorous and successful efforts of Playboy in policing and enforcing its lifestyle branding trademarks. In several cases, a court agreed with Playboy Enterprises, Inc. that use of the marks PLAYBOY® and PLAYMATE® by various competitors selling adult materials in order to drive traffic to their website, would cause confusion sufficient to deserve an injunction permanently stopping the practice and, in some cases, an award of money damages.
Can I make a parody, political commentary, or mockery of someone’s trademark?
Parody is protected speech entitled to strong protection under the 1st Amendment to the US Constitution. This is generally only a very strong right in the United States. (There may be similar rights in other countries; consult with an expert on the applicable law). As a general rule, parody will be allowed (and may even be commercialized) if the parody is different enough from the parodied mark for the general public to understand that a parody is intended. Use must be satirical, lampoonish, ridiculing, or making social or political commentary or statements. For a good example of a recent parody trademark use which resulted in a landmark case, see Mattel Inc. v. MCA Records, — F — (9th Circuit Court of Appeals, 200X) (where the title and lyrics of a popular top-40 song by the band Aqua included the trademark BARBIE®, and the court held that the social commentary and satire inherent in the song were sufficient to avoid a finding of trademark infringement).
Can I change the spelling or punctuation of an existing trademark to make it my own, and use the variation to compete with the mark owner?
This is classic trademark infringement. No one may adopt trademarks, service marks, or design logos which closely mimic an existing trademark or service mark, or use a mark which leads the public to believe that they are selling the same products coming from the same source or are otherwise related to the company with the existing brand.
The test for what is too close is likelihood of confusion or actual confusion of a buyer in the marketplace for that product or service. If a potential buyer is likely to think you are related or are the same company, or even that the good or services are the same ‘brand,’ you have come too close to the mark and you will have legal liability for diversion of sales, lost profits, and possibly dilution of an existing trademark.
I am a trademark owner. Do I have to pursue people or companies who are using my trademarks in competition with me?
f you are a trademark or service mark owner and you know of anyone who is using your trademarks or service marks in competition with you, you have a duty to take protective action to avoid losing your rights. You can’t sit on your hands or look the other way, or prosecute “big” violators and ignore “small” ones. If you allow infringement to go on without bringing a lawsuit for enforcement, you risk losing your registration or common law rights completely.
Copyright 1999 – 2007 Carol Ruth Shepherd.
If you have issues concerning trademarks, legal and correct trademark usage, and/or trademark registration or ownership and you need to consult an experienced trademark attorney, you can reach Carol at (734) 668-4646.