With the internet and social media, information and content moves so quickly that companies may lose control of their trademarks. A trademark is what distinguishes your product or services from the competition, but improper use may cause the mark to become generic, and thus not protectable. To help avoid the same fate as “aspirin,” “escalator,” and “thermos” — all of which started out as trademarks but have since become generic — here are some tips on how to protect your trademark.
1. Use Notice Markings. Placing a “TM” marking after your trademark gives notice to others that you are claiming rights to the mark. It also helps distinguish the mark and draws it out of the context for the reader. If you have already registered the trademark with the U.S. Patent & Trademark Office (USPTO), use the ® symbol.
2. Distinguish Your Mark. Make the trademark stand out from the surrounding text so that it is distinguishable. Marks should be CAPITALIZED, underlined, italicized, bolded, or placed in “quotation marks.” The goal is to create a distinct impression to consumers who see the mark in print or electronic media.
3. Use Your Mark Correctly. A trademark should be used as an adjective. This can be accomplished by adding the generic noun for the product or service after the mark. Further protection can be achieved by adding the word “brand” after the mark, and before the generic name. For example, “Kleenex® brand facial tissue,” “Xerox® brand photocopier,” and “FedEx® brand overnight courier service.”
4. Be Consistent. Do not change the spelling or abbreviate the mark. Also avoid modifying it into a plural. For example, use “buy Lego® bricks,” not “buy Legos.”
5. Register Your Trademark. Registration with the USPTO provides nationwide notice of your claim and creates a legal presumption of validity and ownership. The USPTO also bars registration of confusingly similar marks. Registration further allows you the ability to use the ® symbol.
Proper trademark usage is extremely important. A company may be unknowingly using or allowing others to use its mark improperly, which will undercut the mark’s value and cause it to become generic. You can avoid this problem by properly using, protecting, and policing the mark and speaking with an experienced intellectual property lawyer if you have any questions.
Eryn Y. Truong, Esq. is Counsel to Campolo, Middleton & McCormick, LLP, a premier law firm with offices in Ronkonkoma and Bridgehampton. Chair of the firm’s Intellectual Property group, Eryn’s practice encompasses a wide range of matters including trademarks, copyrights, trade secrets, privacy rights, licensing disputes, and domain name dispute resolution. Contact Eryn at [email protected].
