By
Crystal Broughan, Esq.
Marks Gray, P.A.
Business owners often believe that once they obtain a trademark registration from the United States Patent and Trademark Office (USPTO) their trademark is protected. But they need to actively protect their trademarks on an ongoing basis.
The company should have a protocol in place for the use and protection of their trademark. The certificate of registration is just one form of protection. The strength and distinctiveness of the trademark needs to be maintained so consumers do not become confused as to who owns the trademark. The trademark should identify a product or service from a single source. Trademarks may be diluted, abandoned or cancelled due to the owner’s failure to properly use and protect the trademark.
The ® symbol should be next to the mark whenever the trademark is used in promoting the product or service. The ® conveys the message that the mark is registered with the USPTO. The owner of a registered trademark may sue in federal court for trademark infringement and recover damages, profits and costs from an infringer. The registration conveys a presumption of validity to the ownership and right to use the mark. The owner of the mark may file a Declaration of Incontestability with the USPTO after five years of registered use.
The trademark owner may also use the phrase, “Registered, U.S. Patent and Trademark Office” or the abbreviation, “Reg. U.S. Pat. & Tm. Off” to put the public on notice that the mark is registered with the USPTO.
The trademark should be affixed on the product or the product packaging. The trademark cannot identify the source of the product for the consumer if the trademark is not affixed to the product. Service marks should be on signs, advertisements, menus, brochures, websites through which the services are offered and on invoices through which the service is provided.
The mark should always be used as an adjective not as a noun. For example, I own four NIKEs is an incorrect use of the NIKE® trademark. I own four pairs of NIKE® shoes is the correct use of the trademark.
Always use the mark as registered. If you declare specific font styles, colors and graphics when you register the trademark with the USPTO you should always use those specific font styles, colors and graphics when you use the mark. For example the stylized trademark for STARBUCKS includes the colors green, black and white with the mermaid wearing a crown with a star and stars in a circle. Every time you see a STARBUCKS store you see the stylized trademark in green, black and white with the same mermaid wearing a crown with a star.
The trademark should be distinguished from the surrounding text. Use a different font or italics to distinguish a word mark from the surrounding words. If the word mark is used in a paragraph of a brochure or website the trademark should be distinguished by using all caps or italics. The generic name of the product or service should be used immediately after the trademark name. For example, NIKE shoes are used by top athletes.
Do not use the trademark in the possessive or plural form. Children receive NESTLE® chocolate bars for Halloween not NESTLES. You drink CUPCAKE® wine with your dinner, not cupcakes.
Trademarks that are misused can become merely generic product names with no trademark rights. The following list of generic words used to be registered trademarks but became generic product names due to misuse:
Elevator
Corn Flakes
Yo-Yo
Zipper
Kerosene
Police the use of your trademarks by reviewing all marketing materials on a regular basis to make sure the marks are correctly used. Send cease and desist letters or emails to other individuals or companies that incorrectly use your marks. Some companies run corrective advertising to remind the public not to use the trademark as a generic product name. Your trademarks identify your company as the source of goods and services. So, make sure you protect your brand, your reputation and the goodwill of your company so your company products survive for a long time.