Category: Intellectual Property

A Guide to Proper Trademark Use

A GUIDE TO PROPER TRADEMARK USE

The proper use of trademarks is vital in order to establish and maintain your invaluable trademark rights. Proper use preserves a mark’s ability to identify the origin of products or services, and minimizes the likelihood that the mark will become generic or be abandoned.

The following guidelines for proper trademark use apply equally to advertisements, promotional material, displays, packaging, product labels, signs, web sites and other media containing, discussing, or describing, marks.

 GIVE NOTICE OF YOUR TRADEMARK RIGHTS

Providing public notice of trademark rights is important for registered and unregistered marks alike.

The appropriate symbol should be used in connection with all uses of the mark. Typically, proper notice should be adjacent to the mark, usually appearing above or below, and to the right of, the mark. When a mark is used throughout a document, the appropriate trademark symbol should be used at least in connection with the first use of a mark.

Trademark Notices in Registered Marks:

The appropriate form of notice to employ when the mark is registered with the United States Patent & Trademark Office (“PTO”) is as follows:

•           Use the symbol, “®”;

•           Use the legend, “Registered, U.S. Patent and Trademark Office”; or

•           Use the abbreviation, “Reg. U.S. Pat. & Tm. Off.”

Failure to use proper trademark notices each time a federally registered mark is used may hinder the prosecution of a trademark infringement action by allowing the wrongdoer to claim “innocent infringement” as a defense. If proper notice is not used and displayed prominently the infringer may claim ignorance of trademark rights, and damages available to the trademark owner may be reduced.

Trademark Notices in Unregistered Marks:

Providing notice of unregistered marks is highly recommended, but not required by law. Such notice enhances a mark’s source-identifying function and puts third parties on notice of your trademark rights. Again, placement of the notice should be adjacent the mark, usually appearing above or below, and to the right of, the mark in which rights are asserted. Notice of rights in an unregistered mark, consist of the following notations:

•           TM for an unregistered trademark; and

•           SM for an unregistered service mark.

TRADEMARKS ARE ADJECTIVES – NOT NOUNS OR VERBS

Trademarks and service marks are adjectives, and should be used only as such. Marks should never be used as nouns or verbs. Additionally, marks should not be pluralized, nor used in the possessive form, unless of course, it is part of the mark (e.g. McDonald’s). Use of a mark as a noun or verb, over time, can result in genericness, or a finding of unintentional abandonment – even when such improper use emanates from the public, rather than a trademark owner.

One way to ensure that a mark is used in proper form is to follow each use with the generic noun for the product identified. Using the word “brand” after a mark, and before the generic product name, further guards against improper use.

TRADEMARKS SHOULD BE USED CONSISTENTLY AND DISTINCTIVELY

In order to preserve invaluable trademark rights it is important to use the mark consistently in the same way.  Further, the mark should be set apart from surrounding text. The following are helpful tips to insure your marks are used properly:

•           Do not modify your mark.

•           Do not abbreviate the mark.

•           Consistently use the mark in the same font and style.

•           If color is a feature of the mark, use colors consistently.

•           Do not combine the mark with names or marks of others.

•           Do not use mark in combination with other words, symbols or logos.

•           When possible, set your mark apart from text.

•           When a mark is used in text, the marks should be used in ways that distinguish them from surrounding text.

The use of trademark notices, generic terms, and “brand” in connection with marks, helps differentiate marks from generic terms. However, marks also should be CAPITALIZED, underlined, italicized, placed in “quotation marks,” or depicted in boldface type, whenever they appear in printed or electronic media.

AFFIX YOUR MARK TO GOODS AND SERVICES

Not all product names, business slogans, and advertising phrases are trademarks and service marks. In order for trademark rights to be created and maintained, a mark must be affixed to a specific product, or used in connection with the provision of a particular service.

Trademarks are “affixed” by applying them directly to a product, to packaging for the product, or to tags or labels attached to the product or point of purchase displays. Use of a mark on a website or catalog adjacent to a picture of the goods along with a means to order the goods constitutes proper trademark use. Service marks are “affixed” by using them in signs, promotional materials, websites and/or other advertisements offering the services. As a general rule, a mark is not a mark until it has been affixed!

To learn more about trademark use or discuss any issues relating to the protection of your intellectual property, please contact:

Cynthia B. Stevens at:

(312) 368-0100 / cstevens@lgattorneys.com

The Importance of Website “Terms and Conditions”

You may have noticed that many of the websites you visit have what are often called “Terms and Conditions” or “Terms of Use Agreements” (“Agreement”).  Links to such Agreements are often found at the bottom of the home page and/or the website, and the user must accept the terms and conditions in the Agreement in order to use the website. Prudent business owners include such Agreements on their business’s websites to make it clear on what basis information, products or services are being provided through the website and, to the extent possible, limit any liability that may arise out of use of the website.  If your business operates a website it is to your advantage to include an Agreement.  Such Agreements are especially important to companies that sell products, distribute content, and permit users to post messages or other content that raises the potential for third-party liability on their websites. The specific terms contained in the Agreement will vary depending on the nature of the website and the underlying commercial relationship between the user and the website owner.

Most Agreements should address some or all of the following: (1) a clear statement that use of the website constitutes acceptance of the terms set forth in the Agreement; (2) a detailed description of the services, products and/or  information provided through the website; (3) any payment terms and return policies for e-commerce websites; (4) the method for creating and canceling accounts, if applicable; (5) general disclaimers and website-specific disclaimers depending on the nature of the website; (6) ownership of the intellectual property rights in and to the website  content; (7) intellectual property rights in and to any submissions by the user;  (8) limitations of liability; (9) any age restrictions; (10) Digital Millennium Copyright Act safe harbor language; (11) restrictions on the user conduct; and (12) a dispute resolution section, including choice of law and arbitration provisions.

To discuss your website’s “Terms and Conditions” or “Terms of Use Agreements”, or other important disclaimers which may be appropriate for your business, please contact:

Cynthia B. Stevens at:

(312) 368-0100 / cstevens@lgattorneys.com

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