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It is possible to weaken your trademark rights, or loose
them altogether, if you fail to use your mark properly. For instance, if
you try to stop an infringer from using your mark after you've failed to use it
properly, you may encounter arguments that your mark is generic,
that the user was an innocent infringer, or that your mark is not a mark at all.
A court may view the misuse of your own mark as an admission that you did not
consider the mark your proprietary property, or that the mark is generic.
Proper management and control over how your mark is used will strengthen your
mark's identification as a mark, and may prevent or greatly diminish the
possibility that your mark will be seen as generic.
The following rules will help you establish trademark
rights, and prevent problems that can erode the enforceability of your trademark
right once established.
Affix the trademark to the goods or services provided
Affixing your trademark to goods and services is necessary in order to
demonstrate that a mark is used
in commerce, which is a fundamental requirement for trademark ownership in
the United States. For a trademark to be "affixed" to goods, the mark
should ideally be placed on the goods themselves, or on their containers,
attached tags or labels. You can also satisfy the affixation requirement for
goods if the mark is prominently featured on a conspicuous display associated
with the goods. If none of the above are practicable, the mark may be used on
documents associated with the sale of the goods as a last resort. For services,
a trademark is "affixed" if it is used in the sale or advertising of
the services, as long as it is used in direct and explicit reference to the
services provided.
Always use the mark as an adjective
It is very important to always use the mark as if it were an
adjective, and never use it as a noun or a verb. For example, do not allow
marketing material to read, "AURORA is the best cat litter on the
market." Instead say, "AURORA brand cat litter is the best on the
market," or even "AURORA cat litter is the best...." Similarly,
makers of the XEROX brand copier probably cringe when they her people say they
are XEROXING instead of saying they're making copies on the XEROX copier. These
may seem a ridiculous distinction to some. However, the consequences for
dismissing this advice are great. If your mark is challenged on the basis that
it is generic, you will have a much harder time arguing that it is not generic
when you have treated your mark as if it were a class of goods, rather than a
single brand in a class of goods.
Set out the mark from surrounding text
You should italicize, underline, capitalize and/or bold the mark when
it appears in text in order to set it out from the generic word for the product.
This helps maintain the distinctive nature of a mark in the minds of consumers.
Provide notice next to your mark whenever possible
You provide notice of trademark rights when you use of the symbols, TM,
SM or ® next to your mark. You can also provide notice by using a phrase such
as "XYZ Company is the registered owner of the trademark ABC," or
"Reg. U.S. Pat. Off." Use the former phrase whenever ownership of the
trademark is not obvious from the context in which it is used. Click
here for more information on using symbols.
Avoid plural or possessive forms of the mark
Never use a mark in the plural form, for instance NIKES or REEBOKS. In these
examples, the plural form encourages the public to view these marks as if they
were synonyms for shoes. A possessive form, such as NIKE's or REEBOK's is
similarly problematic.
Don't dissect the mark by abbreviating
If your mark contains more than one lingual or graphic component such as TOY
HAVEN, use both words instead of referring to the company as the HAVEN.
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