Trademarks can help preserve value for a company by identifying the origin of the goods or services to which it applies, but only if the marks are used correctly. Providing public notice of trademark rights is also essential to maintaining the strength of a mark and minimizing the possibility that it will become generic.
The following FAQs aim to help companies understand the basics of using trademarks.
Anyone can make pain relievers that contain Ibuprofen and Acetaminophen. But consumers regularly pay twice as much for the name brands TYLENOL® and ADVIL®. Trademarks clearly distinguish the source of products — a factor that consumers often consider when making purchasing decisions.
- A trademark is usually a word, phrase, symbol, logo or design that identifies and distinguishes the source of the goods of one entity from those of another. In some instances, a distinct sound, color scheme or three-dimensional shape may qualify for trademark protection.
- A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.
- The term trademark is generally used to identify a mark that covers both services and goods.
- The symbol ™ represents an unregistered trademark, whereas the symbol SM represents an unregistered service mark. These symbols provide an informal notification to the public that the owner claims rights to the mark, regardless of whether the owner has filed an application for the mark with the United States Patent and Trademark Office (USPTO). The symbol should appear above and to the right of the mark in which rights are asserted.
- Three common ways to give notice that a mark is registered with the USPTO include:
- Use of the ® symbol
- Use of the legend: Registered, U.S. Patent and Trademark Office
- Use of the abbreviation: Reg. U.S. Pat. & Tm. Off
The location of the ® symbol should appear above and to the right of the registered mark. The legend or its abbreviation can be placed at the bottom of the first page of any new document, advertisement, web page or the like, but should indicate the mark to which it applies.
- A trade name is used to identify a company or a business and serves as the name of the company or a business.
- In contrast, a trademark or service mark is used to identify the source of the products or services that the company or business sells or provides. A trade name can also function as a trademark or service mark, depending upon the context in which it is used. For instance, if a trade name is used as more than just the company name and informs consumers where a product or service has originated, then it is also being used as a trademark or service mark.
- A trademark should be used as a proper adjective or adverb, not as a noun or verb. In other words, a trademark should be used to modify a generic, or common descriptive term. For example, “RITZ® crackers taste good,” is proper usage. “Have a RITZ,” is not.[i] In the second usage, the owner of the trademark runs the risk that the mark will become generic. This is why Xerox Corporation carefully insists that journalists and advertisers always speak of “photocopying” documents, not “Xeroxing them.” Likewise, people should ask for a “photocopy,” not a “Xerox.” In the first example, Xerox is being used as a verb; in the second, as a noun.[ii] At one time, people so commonly misused the trademark XEROX that it was in danger of becoming generic.
- A trademark or service mark should be used distinctively. In other words, a trademark or service mark should stand out from the text that surrounds it — for instance, by using a special font, quotation marks, all-caps, initial caps, bold type, italics or underlining.
- A trademark should be used consistently. Any variations or deviations in use create a new and different trademark. This is particularly applicable in the case of slogans and design marks. Importantly, companies should apply for the mark that they will actually use without making any changes. Problems can arise when companies need to submit a specimen of use to the USPTO. If the slogan has changed by even one word, or the design has been slightly altered, the USPTO can reject the specimen and require the applicant to begin the application process all over again.
- Companies should always use the proper form of notice to identify the trademark or service mark as registered or unregistered.[iii] Failure to use a registration notice on a registered trademark or service mark may result in lost benefits (for example, losing the ability to collect increased damages from an infringer). Conversely, using a registration symbol on a trademark or service mark that is not registered may subject the owner to a fine.
[i] In the case of trademarks that are also used as trade names, sometimes using the mark as a noun is necessary.
[ii] XEROX could be used as a proper adjective. For example, “We just purchased a XEROX brand photocopier for the office.” This would be a correct usage.
[iii] If a company is using the mark several times on one printed page or web page, the company can place the symbol once next to the most prominent usage, or place a notice or legend at the bottom of the page.
- A domain name is an internet address of a particular individual or entity. The mere use of a domain name as a directional reference, similar to the use of a telephone number, is not a trademark usage.
- A domain name can also function as a trademark or service mark depending upon the context in which it is used. If a domain name is a unique name used to indicate the source of the goods or services, then it fulfills the requirements of a trademark or service mark. AMAZON.COM is an example of a domain name that is also a service mark.
- When a trademark falls into the “public domain,” it becomes available for anyone to use. This happens when the trademark owner does any of the following:
- Permanently ceases using the mark
- Intentionally abandons the mark
- Loses the exclusive right to use the mark through misuse of the mark, which causes the mark to become generic
- The major consequence of the improper use of a trademark is the risk that the mark will become generic. When a mark becomes generic, it no longer functions as a trademark and therefore loses its rights as a trademark. Examples of trademarks that have become generic due to improper use include “aspirin,” “escalator,” “shredded wheat,” “thermos” and “yo-yo.”
If the heading of an article or press release acknowledges a trademark, the body of the document does not need to also acknowledge it. The trademark symbol only needs to appear in the first or most prominent mention of the mark.
A single reference to the trademark is sufficient in either its first use or most prominent use within the document, including in the title of a document or report. However, if the trademark appears in sections of a document that may be published or distributed separately, the ™ or ® symbol should be used again.