How can trademarks be used most effectively? In order to allow consumers to quickly and easily recognize a trademark, the rendition of the trademark should be consistent every time it is displayed. Further, a trademark should be used in a manner that distinguishes it from surrounding text. The mark should be clearly and visibly seen by consumers and should not simply be an indistinguishable part of a larger context. Whether this has been done successfully depends upon the “overall commercial impression” of the trademark in its particular setting. A trademark can be distinguished in a variety of ways, such as by physically placing the trademark apart from surrounding text or by distinguishing the trademark’s appearance by using a different size, typeface, capitalization, or color from the surrounding text.
When used properly, a trademark is a “brand name” for the type of goods or services that it identifies. If a trademark comes to be known as a common name for those goods or services, it is at risk of becoming generic. For example, the words ASPIRIN, THERMOS and ESCALATOR started out as trademarks but became so commonly used that they became generic words and lost their trademark protection. Therefore, it is important for trademark owners to refrain from referring (or allowing others to refer) to their trademarks as generic terms used to describe the products generally. A company should use a trademark as an adjective to modify the generic name of the product (e.g., “Xerox® brand copy machine”), either with or without the word “brand,” and should avoid using or allowing others to use the trademark as a noun (e.g., “make a xerox”) or a verb (e.g., “please xerox this for me”), and should also follow the general trademark usage guidelines set forth herein.
A trademark should be followed by a notice that it is being used as a trademark whenever possible. Although not required by law, such a notice serves a useful function by placing the world on notice of the trademark owner’s claim of exclusive right to use the mark. Such a notice is also necessary before the trademark owner can collect any monetary damages for infringement of the mark (although even without such notice the trademark owner can still seek injunctive relief, that is, a court order prohibiting another party from using the mark).
At a minimum, a notice should be used the first time the mark is used as a trademark on advertising, product packaging or other documents. Before registration in the United States Patent and Trademark Office, the notice should be TM for a trademark or (SM) for a service mark (e.g., JeepTM), or the mark can be followed by an asterisk that refers to a footnote that indicates the owner’s claim of rights in the mark, e.g., “JeepTM is a trademark of Chrysler LLC.” Once the trademark is registered, but not before then, the products, labels or advertising materials bearing the mark may carry the legend “Registered in the U.S. Patent and Trademark Office,” “Reg. U.S. Pat. & Tm Off.” (both of which commonly appear as footnotes), or the registration symbol ®.
Improper use of the registration symbol ® can result in loss of rights, and in some other countries, fines or imprisonment. Care should be taken to comply with the laws of the jurisdiction where the goods or services bearing the mark are being sold, especially where the mark is registered in some jurisdictions but not others.
It is also helpful to indicate in some way who owns the mark. Although this is not required by law, doing so may be helpful in the event of a dispute concerning trademark ownership. If ownership of the mark is not obvious, use an asterisk to indicate ownership in a footnote(e.g., “JeepTMis a trademark of Chrysler LLC” or, after registration, “Jeep® is a registered trademark of Chrysler LLC”).
Please contact a member of our Trademark Practice Group if you have any questions about these guidelines or would like further information.