In simple terms, if you do not use your mark correctly... you will loose it.
The following guidelines are a suggested policy for protecting your trademarks ir regardless of the fact that they are registered or unregistered marks. These guidelines should be distributed to and followed by all of your employees.
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 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.
First - 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."
Second - 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.
Third - 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).
When a number of trademarks are used within the same page, a notice such as the following, may be used;
"WIDGET" are trademarks of XYZ Company. Reg. USPTO"
It is a common courtesy, but not legally required, to acknowledge the trademarks of others used in comparison advertising.
Fourth - Printed Materials
Your objective is to make the mark stand-out from the rest of the text. In literature, pamphlets, business letters, faxes, e-mail or memos, your trademarks may be identified by use of capital letters, bold face type, a larger font size, different colour, italics, or quotation marks. We would not recommend the use of underline, double underline or the asterisk, as they not only detract from the text but also do not clearly denote the term is being used as a mark. In addition the printed material needs a public notice somewhere on the page.
Fifth - 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 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
You should use contistent and continuous methods of use for your trademark. 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.First - Your mark is an 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.
Use your trademarks consistently, exactly as designed. Do not use the trademarks in plural form. Correct "Order three IBM computers," not correct, "Order three IBMs." 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.
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.
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 and 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.Fifth - 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 otherwise 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:
Management of your Mark
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;
Make sure all your employees -- 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.
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 advise 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.
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 favorable 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:
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.
Arvic Search Services Inc.
Suite 260, 2323 - 32 Ave. N.E. Calgary, Alberta Canada T2E 6Z3
Phone: 403-234-0844 Toll Free: 1-888-227-8421 Fax: 403-294-0944 or Email Us