Trademark Rules To Live By

April 2010

Your trademark is an important asset of your business. To preserve and enhance its value, it is critical that the trademark be used properly. Following is a list of basic rules for trademark usage:

1. Use appropriate trademark symbols. You should use the "TM" or "SM" in connection with unregistered trademarks and the registered trademark symbol (®) in connection with federally registered marks. The "TM" stands for trademark and should be used with marks that are physically affixed to your products, as in a product label or packaging. The "SM" stands for service mark and should be used to advertise services. You may not use the registered trademark symbol until and unless you have received a Certificate of Registration from the U.S. Patent and Trademark Office.

You do not need to use a trademark symbol every time the mark appears in the same document. Use the appropriate trademark symbol the first time the mark appears, and then use your judgment with respect to the rest.

2. Use Your Trademarks as Adjectives and Not as Nouns. Ideally, trademarks should be used as adjectives and not nouns, but this rule is loosely followed. The risk in using a trademark as a noun is that it may become a generic name (like Kleenex, aspirin, escalator, thermos, etc.) and lose its trademark status. On the other hand, you should be careful not to incorporate other words as part of your trademark, or you may face issues when it comes time to renew your registration. The actual trademark should be set apart from the noun that follows it, either through font or spacing.

3. Differentiate your company name from your trademark. Putting your company name on the Contact Us page of your website is entirely different than using your trademark on your product labels or to advertise your services. The latter constitutes a trademark usage, but the former does not. Company names on letterhead, in signature lines, and on business cards (as part of the company address) should not include trademark symbols. Company names are also referred to as "trade names," which should not be confused with trademarks. When you file papers with the Secretary of State's office to form a new entity, unless you have submitted a separate trademark application, the Secretary of State's office does not perform a trademark search. Having your company name approved by the Secretary of State's office does not confer any trademark rights.

4. Always use the mark as it is registered. If you register a given word mark or logo and subsequently change that mark-for example, by modifying the logo or adding to, deleting from or changing the order of words in the word mark-then the altered mark may no longer enjoy the benefits of federal trademark registration. Immaterial alterations (such as changes in punctuation or adding or deleting the words "a," "an" or "the") are permitted, but more significant changes are not.

Do not confuse this rule with the likelihood of confusion analysis for trademark infringement purposes. In general, the rule that you must use your mark exactly as it is registered is more restrictive than the test for infringement; that is, depending on the degree of similarity between the goods and/or services at issue, the infringing mark may not need to be identical to your mark in order for there to be infringement.

5. Never let anyone use your marks without a written license agreement. If you do, you may be deemed to have waived your trademark rights. This is called a "naked license." For more information on naked licenses, please click here.

There are numerous other "rules" relating to trademark filings, renewals, infringement, dilution, ownership and licensing, but this article is intended solely to serve as a guide for trademark usage. Please do not hesitate to contact us if we can assist you with these or any other trademark matters.


Amicable photo of Toni

Antoinette M. Tease, P.L.L.C.