Protecting Your Trademark Rights

October 28, 2017Business & Taxation

By Eric J. Tweed

In a recent edition of our Business Briefs, we discussed what a trademark is and the process of developing and registering a new trademark. In summary, we discussed the fact that a trademark is used to identify the source of goods or services and that the more distinctive the mark, the more likely it is that your rights associated with a mark will be enforceable.

Now let us assume that you have identified a distinctive trademark and performed a search to ensure that no one else is using the mark to identify the goods and services you wish to provide.  In addition, you have applied for and obtained registration with the United States Patent and Trademark Office.  Federal trademark registration provides, among other benefits, the presumption of ownership of the mark, the right to use the mark throughout the U.S., and the ability to stop others from using similar marks for similar products. Regardless of whether you have a registration with the Patent and Trademark Office, however, it is important to protect the rights and the goodwill you have developed through your hard work in advertising your goods and services and providing excellent service to your customers.

So how do you protect your rights in the trademark and the goodwill established by your all of your hard work? Four important things to do are: (i) include the proper notice of your trademark when using it, (ii) make sure the mark stands out from other text; (iii) use the mark exactly as it is registered or intended to be used; and (iv) police your mark and when necessary take appropriate steps to enforce your rights in the mark.

Notice. If you have not obtained federal registration for your mark, you should always use the TM symbol (goods) or SM symbol (services) next to your mark.  These symbols put others on notice that you are using the mark as a trademark and dissuades others from using the mark. If you have obtained federal registration with the United States Patent and Trademark Office, then you should use the ® symbol when using the mark. Using the ® symbol ensures that others are on notice of your federal registration, and failure to use the symbol could mean that you give up the right to recover lost profits or monetary damages in an action to enforce your rights in the mark.

Display Prominently.  Displaying your trademark is also important in maintaining your rights. Always ensure that the trademark is separate and stands out from other text, especially if it is a standard character mark and does not include any design elements. Moreover, your trademark should be used on packaging if it is used with a good rather than a service, and not just with advertising or promotional material. Remember, a trademark identifies the source of a good, and proper evidence of use requires use that identifies the good itself, such as labels and display tags.

Use the Mark as Intended. Always use the mark exactly as it is registered or exactly as you intend to use it and always use it as an adjective. Never use the mark as a noun or a verb. Doing so could undermine the work you are doing to establish the mark by diminishing the strength and enforceability of your mark. There are many famous examples of marks that have lost their distinctiveness because they were used improperly. Have you ever asked for a Kleenex? Or have you ever Xeroxed something? Both are examples of improper uses of trademarks that have diminished the rights in the trademarks for the owner. The proper use of the above mentioned trademarks would be: “Please give me a Kleenex brand tissue”, and “I made copies on the Xerox brand copier.”  Be careful to avoid having your trademark become synonymous with a thing or an action, or you might risk losing the rights associated with your trademark.

Similarly, never pluralize the mark or make it possessive unless such use is part of the mark. For example, you wear “Nike running shoes” as opposed to “Nikes.”

Police and Enforce. To ensure that your mark is being used properly, you should always police your mark and ensure that no one else is improperly using the mark or infringing on your rights by using a similar mark. Google alerts or other trademark monitoring services can help you determine if others are improperly using your mark.  In the event that you suspect an improper use of your mark, it is important to considering enforcing your rights.  Enforcement can begin with a letter to the improper user and can escalate into a legal proceeding.  Policing and enforcing your trademark rights helps ensure that you maintain the rights in your mark and the goodwill that you establish in the mark through its proper use.

As many of you may know, Saalfeld Griggs PC has experienced trademark attorneys that can assist you with the trademark process both before and after registration.  Moreover, this fall, Saalfeld Griggs PC will be holding an event at its offices geared toward its clients’ trademark needs. This event is still in the planning stages. If you are interested in finding out more about this event, please contact Teresa Green at [email protected]

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