To protect your trademark’s value and keep it alive, it is critical that owners of marks understand that there is a correct way to use, display and serve public notice of your ownership in your brand names or trademarks. Your failure to observe these rules will result in your mark loosing its distinctiveness and falling into the public domain. In simple terms, if you do not use it correctly you will loose it. The following guidelines are a suggested policy for protecting your trademarks regardless of the fact that some of them might not be registered. These guidelines should be distributed to and followed by your employees.
Trademark Notices: You want the world to know that the names you give your products or services are in fact yours. You do this by giving PUBLIC NOTICE of the fact that you have adopted and are using selected words, phrases or designs as trademarks. Use the proper trademark notice sufficiently to give actual notice. Use such notices for each trademark in at least one prominent place in every medium in which the trademark appears (for example, in advertising, packaging, labels, reference manuals and brochures), but not so frequently as to distract the reader .
Registered Trademarks: For trademarks registered with the US Patent and Trademark Office, place the ®symbol in the upper right-hand corner of the mark. For marks registered with the Canadian Intellectual Property Office, place the tm; symbol in the upper right-hand corner of the mark. DO NOT USE THE ® symbol on marks registered in Canada .
As an alternative, or in addition to the use of the symbol, give public notice at or near the bottom of the medium where the marks are displayed. For marks registered in the USA use the phrase “Registered in the U.S. Patent and Trademark Office” or the abbreviated version “Reg. USPTO.” For marks registered in Canada use the phrase “Registered in the Canadian Intellectual Property Office” or the abbreviated version “Reg. CIPO .”
Unregistered “Common Law” Trademarks: Trademarks do not need to be registered in order to have legal protection against infringement. To serve public notice that this is your mark place the tm symbol in the upper-right hand corner of the mark. Do not use the ® symbol unless or until federal registration is actually issued in the USA. False use of a public notice of the ® symbol can result in the denial of federal registration or refusal of enforcement by a court .
Exceptions: When it is not possible to use the above notices, a notice on the bottom of the page should identify each of your trademarks. If practical, place a small asterisk in the upper right-hand corner of the trademark, along with the applicable asterisked notices at the bottom of the page .
“ ® the property of XYZ Company. Reg. USPTO” (for US registered marks).
“* tm; the property of XYZ Company. Reg. CIPO” (for CDN registered marks).
“*tm; the property of XYZ Company.” (for all unregistered marks used in any country).
When a number of trademarks are used within the same page, a notice such as the following, may be used;
“GADGET” and “WIDGET” are trademarks of XYZ Company. Reg. USPTO” or
“GADGET” and “WIDGET” are trademarks of XYZ Company. Reg. CIPO” or
“GADGET” and “WIDGET” are trademarks of XYZ Company”
It is a common courtesy, but not legally required, to acknowledge the trademarks of others used in comparison advertising .
Printed Materials: Your objective is to make the mark stand proud of the rest of the text. In business letters, faxes, e-mail or memos, your trademarks may be identified by use of capital letters, bold face type, larger font size, different color, italics, or quotation marks. We would not recommend the use of underline or double underline.
Foreign Use: If you export products, be aware that use or registration of a trademark in either Canada or the United States may not be given the same effect in a foreign country. A number of countries consider use of the symbol to be illegal if the mark has not been registered within that country. Therefore, all goods and promotion materials shipped to or used in a foreign country you should use the tm; symbol rather than the ®. This is particularly important if you are a Canadian exporting to the USA. We strongly suggest you investigate the trademark registration requirements of the foreign country before you ship your goods .
If significant foreign marketing is contemplated, registration in the pertinent foreign countries should be pursued. In some countries, a registration can be based on “proposed use” and the first party to file its application becomes entitled to prevent others from registering the mark. Some foreign companies make a business out of registering U.S. and Canadian trademarks for the purpose of selling them back when you attempt to enter the foreign market. You are protected against this practice in both Canada and the USA .
Failure to use at least one of the approved notices of federal registration may waive certain remedies for infringement available under U.S. or Canadian law.
Proper Use of a Trademark
The most effective trademark use is consistent and continuous. A mark can fall into the public domain if used carelessly, and registration can become more difficult if the company’s use of the mark has been incorrect. The main way to prevent a mark from becoming public property is to show that the mark is not merely descriptive of your product’s characteristics. It is your badge of distinction and not the name for the product. Here is a collection of rules for you to follow .
1. Adjective: Always use your trademarks as adjectives, not as nouns. For example, it is not correct to refer to “xeroxes.” It is correct to refer to “Xerox” copiers or copies. Refer to your [Trademark] software or programs, rather than using that term standing alone as the name for the product .
2. No Plurals: Use your trademarks consistently, exactly as designed. Do not use the trademarks in plural form. Correct “Order three IBM computers,” not, “Order three IBM’s.” Unless your mark specifically uses a lower case initial letter, it should always have a capitalized initial letter or be set out in all capitals .
3. No Changes: Do not change the mark through additions, prefixes or suffixes, unless you intend to create another trademark.
Do not use the mark with a possessive form: It is not correct to refer to “Word Perfect’s” features. It is correct to refer to the features of the “Word Perfect” program .
4. Monitor Licensees: I Franchisees: Do not license others to use your marks except for the goods and services with which they are associated. Then exercise effective control over the quality of the goods and services offered under the licensed mark, so that it continues to represent the goodwill connected with your products. Failure of a licenser of trademark rights to reserve the right to control the quality of the goods and services offered under the licensed mark can be fatal. Moreover, those quality control rights must actually be exercised. Exercise effective control over the use of your work in labels, signs and displays. Inspect samples of the associated goods, business premises and anything else that displays the mark for the proper usage an appropriate quality. Be sure that your licensees or franchisees do not utilize the mark in a manner that exceeds the license (for example, on other than the licensed goods or services). Require them to enforce proper use of the licensed marks by their employees.
5. Family of Marks: If your business uses a group of trademarks which have a single component common to each then creating an association among the various marks may allow you to be able to prevent other businesses from using an other- wise dissimilar mark having the same component.
(The basic “Kodak” trademark, for example, has spawned KODA- trademarks, such as Kodacolor and Kodachrome)
If you decide to create a “family” of marks, and to establish overall protection which is greater than the sum of the parts, follow as many of the following practices as possible:
Adopt a highly arbitrary component capable of being used, recognized, and protected by itself.
Make a conscious effort to use, display and advertise the "family" marks together in such a way that consumers become aware that the family exists and associate the family with the trademark owner. Use advertising techniques such as "Another product in the '[Trademark]' family of computer programs."
Advertise in this manner continuously and, if possible, heavily.
MANAGEMENT AND RECORD KEEPING
As the owner of a mark it is incumbent upon you to not only use the mark correctly but also to keep records of such use. In this regard we strongly suggest you appoint someone to be your Trademarks Coordinator. This person should administer all aspects of your trademark program. They include;
Training your employees in proper use of your trademarks,
Reviewing and clearing all advertising and promotional copy prior to publishing ,
Advising your customers and competitors of your marks and ownership in same,
Deciding, with the assistance of your trademark agent, whether to register the trademarks with the Canadian, American or other Trademark Office,
Deciding, with your attorney's advice, what action to take against infringers of your trademarks .
1. Training: Make sure your employees (and family helpers) - from mail clerk to chief executive, and particularly marketing, advertising, packaging, and secretarial employees -- know what trademarks you are using and how they are to be used .
Experience shows that a printed trademark policy generally does not provide sufficient reminder unless supplemented with periodic meetings.
Make sure any outside advertising or public relations firms you retain know what trademarks you are using and how to use them. Review all advertising and promotional copy for correct and most effective trademark usage .
2. Misuse and Infringement: Your employees and customers should watch for misuse and infringement of your trademarks by others. Misuse of your marks would include making changes in your marks, even unintentionally, or using your trademark as the common name of the goods or services. Infringing marks would include use by another company of a product name or logo that, when used on their product, so closely resembles one of your trademarks as to cause confusion or mistake, or deceive customers.
Your trademarks coordinator should collect information on infringement and misuse, and consider (with the advice of your attorney) whether a demand letter should be sent or other action taken. Employees should not take action on their own if they detect misuse or infringement .
3. Records: Establish a file for collecting documents relating to your trademarks. When it comes to determining who used a mark first, establishing distinctiveness, (i.e. "secondary meaning"), or proving continuous use of the mark in commerce the company with documented historical records is in a more favourable position. This is critical in the case of a mark that is not registered. Your file for each un-registered mark should be used to collect:
Records, letters, invoices, receipts and other documents related to the adoption and first use of your mark; Copies of agreements with outside graphic artists assigning right, title, and interest.
Copies of all advertisements that use the mark, dated as of their appearance, together with records of company expenses for that advertising;
Yearly summaries of the amount of product sold under the particular mark.
Copies of each printed label and promotional material as they are delivered from the printer along with a copy of the printers invoice.
Records relating to any changes in the label; and any demand letters to others who try to pirate your mark by using the same or a deceptively similar mark.
Once your mark is registered your certificate of registration is evidence of ownership as of the date on the certificate. From that date forward you are not required to prove you used the mark as of a particular start date. However, you may be required to prove that the mark is still in use. To prove the mark is still in use you should maintain at least a two year record of all of the above.
The Next and Last Step
Now that you know how to use your unregistered trademark correctly to secure trademark rights, and have already decided to make the changes to your web site, stationery etc. as suggested above, we think you should also give consideration to confirming you are not infringing on the rights of others.
We trust, now that you have read this article, that you will come to the conclusion that you should include a trademark specialist on your list of professional advisors. The staff at ARVIC, welcome the opportunity to be your advisor.
If this article has left you with any unresolved questions, then we ask that you direct them to us. We further ask that you take the time to learn all about ARVIC, who we are, what we can do for you and why you should employ us.
Victor G. Arcuri
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