IP for Business: Proper Trademark Use
Here are two sets of questions. How would you answer them?
First, what do you call a moving staircase? How do you fasten your jeans without buttons?
Now, what do you ask for when you need to blow your nose? How about when your lips are feeling a bit dry?
The answers to these questions, and the differences between the answers, can be important signifiers of a trademark owner’s worst nightmare: loss of rights in their mark. Believe it or not, Escalator and zipper were once trademarked but lost their protected statuses because of how they were used over time. Both Kleenex® and ChapStick® have had to fight battles, both legally and publicly, to keep their protections intact. Loss of rights in this way, often called genericide, can happen to certain marks because the mark becomes not the signifier of the source of a product, but the signifier of the product itself, making the mark generic. Under trademark law, generic terms are not entitled to trademark protection.
The extensive use of a trademark improperly, whether by the company itself or the public, can result in the loss of rights in the mark. Therefore it is important for the owners of trademarks to use them properly and for that use to do as much as it can to keep the public from pushing the mark into genericism.
Here are a few tips to aid you in properly using your trademark:
- Do not use the mark as a verb or a noun.
Trademarks are best used as adjectives. Having your mark be a descriptor of the product as well as an identifier of the source is a great way to both distinguish your trademark and also aid in keeping it from becoming the generic term for the product, especially when other competitors exist or enter the market (did you know Shredded Wheat was once trademarked?). A good question to ask is what is my trademark and what is my product? If those two answers are not separate and distinct, some work may need to be done to differentiate the two.
Ex: KLEENEX® tissues, Zippo® windproof lighters
2. Distinguish the mark from surrounding text.
Doing something as simple as changing the way you present the mark visually can help to protect the trademark from genericide. Typeface changes (using bold font, italics, capitalization, etc.) or distinguishing the mark from surrounding text through sizing and/or spacing can both make the mark stand out and make it clear that the mark is different from everything else surrounding it.
Ex: Band-Aid Brand bandages, Jacuzzi® hot tubs
3. Use Trademark signalers.
These signalers exist for a reason. Use them! Signaling your trademark as a trademark by using indicators like TM, ® or _____ Brand with your mark can be important in keeping the mark from becoming generic not only because it separates the mark from the rest of the text or advertisement, but also because it signals to others what you are using the mark for: source identification rather than product identification (and it can be important in infringement suits). Also, If you’ve gone through the time and effort to receive a federal trademark registration, why not show it off?
Ex: Sharpie® permanent markers, TUPPERWARE®
4. Encourage proper use by your consumer base.
Some of the best promoters and protectors of your trademarks are the people who use them! Educating and encouraging the consuming public to use your marks properly through advertisements and marketing not only helps to promote the mark and the product, but having the proper categorization in the minds of your public can also aid in challenges to your mark.
Ex: “Always ask for a La-Z-Boy® recliner!”
Using these suggestions can help you as you leverage your trademarks to the fullest and keep your marks both distinctive and protected.
