Use it or lose it.
—Popular saying

Who steals my purse, steals trash…but he that filches from me my good name, robs me of that which not enriches him, and makes me poor indeed….
—Shakespeare

Today’s businesses use a number of trademarks and service marks daily. They may be words or phrases which are unique and original to the business—or graphic designs. They may be federally registered—or protected by state registration—or, simply by ongoing use.

How does trademark law affect you? State and federal trademark laws entitle you to protect your trademarks and service marks against others who use deceptive or fraudulent imitations of your marks, or use your marks improperly. Federal registration is the best protection you can have for your marks. In order to preserve your ability to enforce your federal and state trademark and service mark rights, you must be careful to always use your trademarks and service marks in a manner which identifies them as marks, and which distinguishes them from ordinary descriptive adjectives. Because improper usage can destroy a trademark or service mark, this FAQ (guide to Frequently Asked Questions) contains some legal guidelines on proper mark use . . . .




What’s the appopriate way to use a trademark symbol?

Which notice to use depends on the type of protection the mark enjoys. Trademarks and service marks can be registered in either the state or federal systems, or both. They may not be registered at all—although registration is legally preferable to ensure protection. If the mark is already federally registered, you should use the symbol “ ® ” at the shoulder or toe (superscript or subscript) of the mark.

If the mark is registered in Michigan or another state, if the mark is not registered, or if you have applied for registration but not yet received it—use the symbol “TM” or “SM”. As an alternative, you may want to use an asterisk and drop a note to the bottom of the first page or advertisement indicating that “MARKNAME is a [registered] trademark [or service mark] of COMPANY.” Since registrations only apply to what is claimed on the application for registration, take care to use the symbol “ ® ” only for the classes of products or services actually included in the registration.

Using the notice is particularly important where you have an attractive mark that you are “merchandising.” If you are selling or distributing promotional merchandise primarily because its value comes from the fact that your mark is on it, you should be sure to use the appropriate notice to discourage “knock-off” merchandising, since you can easily lose control of the name or image once it gets into the public’s hands.

How do I use a trademark in printed text?

Using a different font, type style or case is the best way to highlight and accentuate a mark’s usage. If the mark is registered as a logo or “design” mark and includes fancy graphics or printing—use the typeset design as much as possible. At a minimum, always refer to the mark in solid upper case.

Should I use the trademark standing alone?

You should avoid using a trademark standing alone, with no other words, whereever possible. The best possible usage is to use the mark as an adjective which modifies the generic or descriptive name of the products or services which are the subject of your sentence—“KLEENEX facial tissues.”

Can I make a verb out of my trademark?

Never use a trademark as a noun or a verb! A trademark is like an adjective or adverb; it always modifies a noun or a verb but does not takethe place of one.

Can I change the spelling of my mark, or hyphenate it, to achieve a new marketing look?

Not without checking with your trademark attorney first! You may need to re-register your trademark. Never change the spelling of a mark, and never vary the spelling of a mark. Plurals and possessives (’s) should never be used, unless they are properly a part of the mark. Avoid “noun-ifying” trademarks marks. It’s easy to destroy trademark protection by routinely adding suffixes such as “-ize” and “-ation” and making marks into everyday words!

Can I use a trademark as a shorthand reference for a group of products?

Many marks which were once protectable became the victims of “genericide.” ELEVATOR, JEEP, ESCALATOR, CELLOPHANE, and ASPIRIN were once registered trademarks which have lost their trademark protection. “XEROX machine,” “SCOTCH tape,” and “JELLO” are coming dangerously close to having only generic meaning.

I’m designing my product packaging. Is it OK for me to save space by listing my company name and address directly below our trademark?

Using a mark which is also a company identifier, followed directly by your address, does not qualify as usage “in the manner of a mark.” When you use your mark in this way, the public and the Trademark Office presume that you are merely giving information about the location of your company.

The primary function of a trademark is to indicate to the public that your goods and services are associated with a single source of quality, integrity and goodwill—not to identify the place of manufacture or services. In letters, advertising, and other materials, trademark-like uses of the company name should always carry the appropriate notice symbol—“ ® ” or “TM” or “SM”.



All references to the company name as a means of identifying the company—as opposed to your products or services—should not be accompanied by a trademark notice.

If your trademark does not appear anywhere else on the product packaging other than in proximity to your company address, you will not have a valid specimen of mark use to support a federal registration.

SOME EXAMPLES

DO

The following sentences are examples of correct usage of the mark CORNPONE for dry food products:

The local lGA supermarket sells CORNPONETM corn muffin mix.

Our pancakes are made with only the finest CORNPONE baking products.

DON’T

The following are examples of incorrect usage of the same mark:

My grandmother always used cornpone when she baked muffins.

Use CORNPONE.

Chef Duglass’ recipe calls for a “cornpone”-style baking mix.

Uncle Jim’s CORNPONE Outlet Shoppe

USE BY OTHERS

Anyone authorized to sell your products has the right to advertise by correctly using your trademarks and service marks and adhering to these rules. However, the advertising must not be misleading or indicate that they are affiliated with your company. No one may adopt trademarks, service marks, or design logos which mimic yours, or which lead the public to believe that they are selling your products or are related to your company. If you know of anyone who is incorrectly using your marks, you have a duty to take protective action to avoid losing your rights.

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