Articles
Trademarks, Service Marks, and Trade Names
This memorandum is intended to provide you with information about trademarks, service marks and trade names, what they are and how they should be used to protect their value.
What are they?
Trademarks and Service Marks
A trademark is generally a word, name, symbol or device used by a business to identify and distinguish its goods from those sold by others. A service mark is a word, name, symbol or device used to identify a service offered by a company and to distinguish it from the services offered by others. Trademarks and service marks ("marks") indicate the source of a product or service, therefore, they provide value to both the business and consumers. Marks help a business to establish goodwill for the company and its products and services. They allow a consumer to identify the source and quality of a product or service by its mark. Marks are not names for the products or services they are associated with, i.e. they do not identify "what is in the box." Marks may consist of words alone, words used with a design, or a design used alone. The coloring or type style may also be considered a feature of a mark. A company's marks may be some of the most valuable assets it owns and should be treated with care.
Trade Names
Trade names are the names used to designate a company, i.e. the business entity. A trade name may be used to refer to all aspects of the business, including the quality of its products and services and its stature in the financial community. A trade name can also be a mark when it is used in connection with a product or service. As with trademarks and service marks, it is important that trade names be used properly.
How Should Marks Be Used?
Proper use of trademarks and service marks is essential in all written materials including, but not limited to, web-site materials, advertisements, brochures, letters, posters, presentations and labeling.
A Mark Should Be Distinguished
A mark should always be distinguished in print from the surrounding text. Unless a mark is a design or stylized mark, it should be graphically distinguished from the remainder of the text. Different means by which a trademark or service mark can be graphically differentiated include:
- printing the mark in upper case letters
- printing the mark in quotation marks
- printing the mark in italics
- printing the mark in bold face type
- underlining the mark
- If the mark is normally written in lower case letters, then it should be set off from the rest of the text in some manner, such as quotations or italics, to insure it is apparent it is a mark.
Correct Use of Trademark and Service Mark Designations
Although it is not necessary to use a trademark or service mark symbol every time a mark
is used in printed materials or on packaging or labels, it should be noted at least once on printed materials, packaging or labels that the term is designated as a trademark or service mark of your company.
The &#reg; symbol signifies that the trademark or service mark has been registered in the United States Patent and Trademark Office (USPTO) and when used should appear directly after the registered mark.
When a trademark or service mark is not registered with the USPTO, it is improper to use the &#reg; symbol. Instead, the &#TM; symbol should be used to designate that the term is a trademark or service mark. The &#TM; symbol is generally used with marks that have not proceeded to registration. As with the &#reg; symbol, it is important to place the &#TM; symbol directly after the mark.
If it is not feasible or aesthetically desirable to place the &#reg; or &#TM; with the mark, the mark should be followed by an asterisk (*), with one of the following footnotes as appropriate:
*Reg. U.S. Patent and Trademark Office.
*This is a trademark or service mark of (company name).
*This is a registered trademark of (company name).
Alternatively, a designation of marks on a panel of packaging or at the end of printed materials will suffice. For example, if a brochure refers to the a mark the following note should appear at the end of the brochure:
(mark) is a trademark of (company name).
This last approach is preferable for labels, packaging, brochures, advertising or promotional materials that are intended to be used in foreign countries. Some foreign countries do not recognize the &#reg; symbol. In other countries, improper use of the &#reg; symbol can result in forfeiture of trademark rights.
Trademarks and Service Marks Are Adjectives
A mark is used to identify the specific source of goods or services, rather than to identify a type of goods or services, therefore, it should be used as an adjective. At least once in all printed materials, a mark should be followed by a noun that is the generic name of the product or service the mark is associated with. Preferably, this should be the first reference to the mark. A MARK SHOULD NEVER BE USED AS A VERB.
Marks should not be abbreviated, spelled in an inconsistent manner or used to create a new words or new phrase. Marks should never be made plural or used in the possessive form. Marks that are registered in a stylized form should only be used in the form in which they are registered.
Avoid Descriptive Uses of Marks
Marks should never be used in a descriptive sense. Such use could erode its value to your company as a mark. Refrigerator was once a registered trademark. Continued use of that mark to describe the product resulted in the loss of the use of the work as a trademark. It is now considered a generic name for the product and can be used by anyone.
Use of Trade Names
The trademark designations, &#reg; and &#TM; should not be used with trade names. When you use a name or symbol to refer to your company, the name or symbol is not being used as a mark, but as a trade name.
Trademarks and Service Marks in Foreign Countries
What is legal or otherwise acceptable in one country may not be legal in another. For example, comparative advertising or use of another company's trademarks on packaging is presently prohibited in some foreign countries. If you have any questions concerning the correct use of trademarks in foreign countries, please contact us.
Unauthorized or Infringing Uses of Trademarks, Service Marks and Trade Names
As previously pointed out, trademarks, service marks and trade names can be very valuable assets. They provide the means by which consumers recognize your products or services and associate those products and services with you. If you suspect that a mark of your company is being used incorrectly, or being infringed, you should take immediate action be prevent any further damage to your mark. Please give us a call if you have any concerns about potential incorrect usage or infringement of your company's marks.
Momkus McCluskey, LLC has an active intellectual property practice. The firm offers comprehensive legal services to its clients with regard to trademarks, copyrights, trade secrets, licensing and other related intellectual property matters. If you have questions about any of the information presented in this memorandum or regarding any other intellectual property issues please give us a call at (630) 434-0400.
