Using Your Trademark or Service Mark CorrectlySeptember 16, 2019
The #1 and most important guideline for proper use of a trademark or service mark is to use the mark as an adjective followed by a noun or generic term for the product or service itself. As shown below, the brand name Nike® is a trademark used on or in connection with footwear and used correctly as an adjective followed by the noun or generic word for the branded product, namely, “sneakers.”
People frequently use the brand name, whether a trademark or service mark, as the actual product name (rather than as an adjective), or use the brand name in a plural or possessive form, as shown below, all of which are incorrect uses.
The same guidelines apply to a service mark that is used in conjunction with a service. The service mark should be used as an adjective followed by a noun or generic term for the service itself. For example, the brand name Skype® is incorrectly used below as a verb or noun. Correct use of Skype® would be as an adjective followed by a noun or generic word for the branded services, namely, “communication services” or “mobile app services.”
|Incorrect Use||Issue||Correct Use|
|Trademark||I love my Nikes.||As noun in plural form.||I love my Nike® sneakers.|
|I love my Nike’s comfort.||As possessive word.||I love the comfort of my Nike® sneakers.|
|Service Mark||We use Skype® to connect with distant relatives.||As a noun.||We use Skype® services to connect with relatives.|
|We like to Skype® our relatives.||As a verb.||We like to use the Skype® mobile app service to connect to our relatives.|
Proper use is important when the trademark or service mark is used in product headings or titles, such as in website drop-down menus and Amazon® product titles, and in any text, reference, or descriptions of the branded product or service, such as advertising copy, promotions, product/service category listings, product/service feature descriptions, user and how-to manuals, product packaging, and other textual references. In such contexts, it is best practice to use the brand name as an adjective to modify the noun or generic word for the product or service itself, e.g., Apple® laptops, Heinz® ketchup, Fuji® cameras, Fidelity® investment services, AT&T® telecommunication services, and SurveyMonkey® online surveys.
The #1 guideline is easy enough to remember and follow, and helps to avoid using the brand incorrectly as a noun, verb, or in plural or possessive form. Proper use and display help to develop and maintain strong, enforceable trademark rights.
There are some exceptions to the rule of using your brand name as an adjective. When displaying the brand name in a website banner or footer, you can prominently display the trademark or service mark alone, as long as use of the brand name in connection with the product or service is as an adjective.
Avoid generic use of your trademark or service mark
Consistent and wide-spread improper use of a trademark or service mark as a noun, verb, and/or in plural or possessive form, as shown above, can lead to genericide. Or, in other words, your company’s improper use of its brand name can help to lead or encourage the consuming public and your competitors to adopt your trademark or service mark as the generic name for the product or service not only provided by your company, but also by third parties offering the same or similar products or services. In such cases, the brand name can lose its ability to function as a trademark or service mark. This can result in a consequent loss of exclusive rights to the brand name and/or its diminished effectiveness in identifying only your company as the source of your branded product or service.
Consider these once highly distinctive and proprietary trademarks for innovative products that have now become the generic names for the products themselves and no longer have trademark protection: Thermos, Aspirin, Linoleum, Cellphone, Escalator, Rollerblades, and YoYo.
Don’t reinforce or contribute to the potential genericide of your brand name! Use your trademark or service mark correctly, and demand that authorized third parties, such as your sales force, distributors, and other promoters, correctly use your trademark or service mark. Such discipline helps with your enforcement efforts against third-party infringement as well as in the defense of your exclusive trademark rights. After all, your brand name is your public identity on which your company builds its reputation and acquires consumer goodwill in your products and services.
How to use the registration symbol & TM notice
Proper display of your trademark or service mark includes correctly using the registration symbol, the R-in-the-circle. Whether your company is seeking a federal or state registration to protect its brand name, the registration symbol should only be displayed with the brand name after your company has obtained registration, which is evidenced by issuance of a registration number and/or a certificate of registration. So, if you have not received from the U.S. Patent and Trademark Office, or the applicable state agency, a registration number and/or registration certificate, your company should refrain from displaying the brand name with the symbol. Case law indicates that use of the federal registration symbol with a trademark or service mark that is not federally registered is considered perpetrating fraud on the consuming public. While it may be tempting to affix the symbol to your brand name, your company needs to apply and wait for registration.
It is recommended that the registration symbol be affixed to your brand name as a superscript or subscript, e.g., Trademark® or Trademark®. Use of the symbol is not mandatory, although its use is highly recommended to alert the public of your registered trademark rights.
Prior to filing for registration, or while the registration application is pending, the TM notice can be affixed to your trademark as a superscript or subscript, e.g., Trademark™ or Trademark™. The TM notice is typically used with trademarks, while an SM notice is used with service marks and can be displayed in the same manner. The TM and SM notices have no legal effect, but their use helps to put the public on notice that your company is claiming rights in the displayed trademark or service mark, which, hopefully, will deter third parties from adopting a mark that is confusingly similar to your mark.
This guidance also applies to logos. The registration symbol and TM or SM notice can be placed proximate to the logo, such that, the symbol or notice clearly applies to the displayed logo. Similarly, the registration symbol should only be used with displays of the logo after it is registered; and, while use of the symbol is not mandatory, it is highly recommended.
For more information on how to use your brand name, or about Trademarks & Copyrights, please contact one of Hinckley Allen’s Trademarks & Copyrights attorneys.