MAKING PROPER USE OF YOUR TRADEMARK
Rayan Felix Coutinho
Introduction
This article will discuss how to make proper use of trademarks to ensure the long term viability of your mark and the goodwill associated with it. The rights to a trademark can be lost through abandonment, improper licensing or assignment, or genericity.
Abandonment
A person or entity cannot warehouse potentially useful marks. The basic idea behind trademarks is to ensure free competition and to protect only marks that are being used in commerce. A trademark is deemed to be abandoned if its owner discontinues the use of the mark with an intent not to resume its use. Obviously, the intent to abandon is a very subjective and fact specific inquiry, although non-use for three consecutive years is prima facie evidence of abandonment.
Improper Licensing or Assignment
A trademark is a source identifier. If a trademark no longer serves its purpose of identifying the goods or services of a particular provider, the trademark may be cancelled. This usually occurs where the trademark is licensed to a third party such as a franchisee and there is inadequate quality control or supervision by the owner of the mark. Similarly, if the trademark owner assigns its rights in the mark in gross, without a corresponding sale of the assets associated with it, the trademark may be cancelled.
Genericity
A generic or common descriptive mark is one which is commonly used as the name or description of a kind of goods and is not entitled to trademark protection under any circumstances. An originally protected mark can become generic over time, thereby losing its trademark protection. Some examples are THERMOS, ASPIRIN, CELLOPHANE, and FRISBEE. Other examples where the marks were almost lost were XEROX ("Xeroxing" is incorrectly used to describe the act of photocopying) and KLEENEX (incorrectly used to refer to all facial tissues).
Tips For Making Proper Use of Your Marks to Avoid the Above Problems
Remember that trademarks are properly used as adjectives, not as nouns and verbs. For example, Pop-Tart brand breakfast pastry, Vaseline brand petroleum jelly, and Scotch brand adhesive tape are proper uses. On the other hand, "Tylenol relieves your headaches," "Band-Aid heals wounds" and "he is xeroxing the documents for you" are improper uses of trademarks. Be careful in your advertising and marketing materials to ensure that you do not inadvertently send your mark down the genericity lane
The rendition of the mark should be consistent every time it is displayed i.e. the same font, style, color, spelling etc.
When possible, indicate in some way who owns the mark. For example, you can put at the bottom of your advertising brochure a caption similar to "Jeep® is a registered trademark of the DaimlerChrysler Corporation."
Set your trademark apart from adjacent text by the use of italics, initial caps, all caps, bold or quotation marks to contrast a trademark from a merely descriptive term, for example KLEENEX® tissues.
Give the public notice of your trademark rights. Use the symbol "®" or "Registered, U.S. Patent and Trademark Office," or "Reg. U.S. Pat. & Tm. Off." if your mark is registered. If the mark is not registered use "TM" or "SM" for trademark and service mark respectively.
Never use your mark in a plural format (e.g. "we are implementing RFC®s" is improper, "we are implementing RFC® products is proper") or possessive noun format (e.g. "RFC®’s product platform" is improper, "RFC® product platform" is proper).
Never use a trademark as a verb. For example, "Xerox® those documents" is improper, but "photocopy those documents on the Xerox® machine" is proper.
Never fragment or abbreviate your trademark. For example, if the mark is "RFC MultiKlix®", don’t use "MultiKlix" or "RFC" standing alone.
Never hyphenate a trademark. For example "RFC MultiKlix®" is proper but "RFC-MultiKlix®" is improper.
Make sure that the mark is affixed to a specific product or used in the provision of your services. It can’t be a source identifier if you don’t use it.
Avoid "naked licensing" i.e. don’t allow licensees to use your mark without restrictions. Not only does this jeopardize the strength and value of your mark, but the goodwill associated with it too. Make sure that a well written licensing agreement is used and any violations are strictly enforced.
Never combine your trademark with other company names or their products. For example, "RFC SystemCo" is improper. "RFC® products incorporate SystemCo® technology" would be a proper use.
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How Strong Is My Mark? If you already have a trademark or service mark, or if you are contemplating the adoption of a new mark, you can evaluate the strength of your existing or proposed mark using the principles that follow to determine the degree of protection afforded to it under the law. If your mark is functional then it is not protected. For example, an application for the registration for bright orange color for pay telephones designed to be visible to passing motorists was denied registration. A product feature is functional and cannot serve as a trademark if the feature is essential to the use or purpose of the article or if it affects the cost or quality of the article, i.e. if exclusive use of the feature would put competitors at a significant non-reputation related disadvantage. Whether a plaintiff’s mark qualifies for trademark protection is determined by where the mark falls along the established spectrum of distinctiveness. Putative trademarks may either: (1) be inherently distinctive, or (2) acquire distinctiveness through secondary meaning. Within these two basic categories are sub-categories that form the complete spectrum of distinctiveness of marks. Arrayed in ascending order roughly reflecting their eligibility to trademark status and the degree of protection afforded, the categories are: (1) generic terms; (2) descriptive; (3) suggestive; (4) arbitrary or fanciful. A generic or common descriptive term is one which is commonly used as the name or description of a kind of goods, e.g. BOOK, NEWSPAPER, and is not entitled to trademark protection under any circumstances. A trademark is descriptive “if it describes the intended purpose, function, or use of the goods; the size of the goods; the class of users of the goods; a desirable characteristic of the goods; or the end effect on the user.” Examples of descriptive terms include HOME-MARKET.COM for internet referral service targeting home owners and e-fashion for electronic retailing services via the internet. A suggestive term suggests rather than describes an ingredient or characteristic of the goods and requires the observer or listener to use imagination and perception to determine the nature of the goods. An example of a suggestive term is THE MONEY STORE for money lending services. A fanciful mark is a combination of letters or other symbols signifying nothing other than the product or service to which the mark has been assigned, such as EXXON or KODAK. Arbitrary marks have significance in everyday life, but the thing it normally signifies is unrelated to the product or service to which the mark is attached, e.g. CAMEL for cigarettes or APPLE for computers. |
