The start of a new year provides a time to reflect on past successes and lessons learned. It’s also a time to chart the course ahead to achieve your goals. One important goal for any business is to protect the uniqueness and “brand identity” that distinguishes it from others. And, there is no more valuable asset of brand identity than a company’s trademarks and service marks.
Like any business asset, trademarks and service marks must be used properly in order to maintain and enhance their value. Failure to do so can result in your trademarks and service marks losing their value and, eventually, allowing copycats to “steal” value from your business.
So, here are a few New Year’s tips to 1. ensure that you know how to properly use (and, thereby, legally strengthen) your trademarks and service marks, and 2. keep from weakening (or even losing) your trademarks and service marks.
I. First, Some Basics:
What Is a Mark? What Is Its Purpose?
In short, a “trademark” is a word or symbol (or a combination of both) used to identify a business’s products to distinguish them from similar products offered by others. Conversely, a “service mark” is used to identify services (rather than products) offered by a business to distinguish those services from similar services offered by others. (Unless stated otherwise, the rest of this article uses the term “Mark” to include both trademarks and service marks.)
Marks help customers differentiate between products or services offered by one business and products or services offered by another. Customers rely extensively on Marks when making purchasing decisions between different brands of the same product. They purchase one product instead of another, more often than not, based on perceptions of the respective quality and reputation associated with a specific brand (the Mark)—often without ever sampling the actual product or service. (Who opens a Coca-Cola beverage to taste it before buying it over a generic labeled store brand?) The ability of Marks to distinguish competing products or services and drive buying decisions is what makes them so valuable. Such value is worthy of protection. And protection starts with proper usage.
What Do We Mean by “Proper Usage” of Marks?
Proper usage of Marks is all about clearly and consistently presenting the Mark in a way that the consumer easily recognizes that the Mark indicates a specific source (or brand) of products or services. The antithesis of this is when a Mark is used in such a way that it is perceived as merely a generic name for a product or service. Proper Mark usage indicates a specific source or brand. (Think: “Buy a BMW automobile”.) Improper usage allows the Mark itself to be mistaken for the generic name of a category of products or services. (Bad: “Hand me a Kleenex”; “Make me a Xerox”.) As customers come to associate your Mark with the specific quality and reputation unique to your brand, properly presenting a Mark preserves—and, over time, strengthens—the Mark’s ability to distinguish your business’s products and services from those of another company in the minds of customers.
II. Do a “Proper Usage” Check-Up: Some Things to Look For.
A. Present Your Mark as an Adjective – Not as a Noun or a Verb. You should always use your Mark as an adjective followed by a noun (the generic name of your products or services). Never use your Mark as a standalone noun or verb, even as a “shorthand” description of the products or services. Failure to consistently present your Mark as a modifier to differentiate your company as the source of products or services leads consumers to think that your Mark is merely a generic name (whether as a noun or verb) for the type of products or services you provide. If that happens, your Mark may no longer be “distinctive”—meaning that customers no longer view it as a basis for distinguishing between your products and services and similar products and services of others. Once your Mark is no longer distinctive, it can lose the legal protections accorded to a trademark or service mark. This includes the right to exclude others from using your Mark.
Here are some examples of correct and incorrect uses of a Mark in a sentence.
Correct: “Use BUZZ cloud data services to manage your data.” (“BUZZ” modifies cloud data services—good!)
Incorrect: “Use BUZZ to manage your data.” (“BUZZ” used as a shorthand noun—bad.)
Incorrect: “BUZZ your data management!” (“BUZZ” used as a verb—bad.)
TIP – One way to determine whether you are using your Mark properly as an adjective is to delete the Mark from the sentence in which it appears. If the sentence still makes sense after deletion, that’s a good sign that the Mark was being used properly in the sentence.
EXCEPTION: Sometimes a business uses the same term as both a Mark (a brand name for its products and services – an adjective) and as a name for the business itself (a noun). (Think “BMW”, which is used both as the name of the company and as a brand name for the automobiles offered by that company.) When the business is merely using the term to refer to itself as a company or corporate entity, it is permissible to use the term as a standalone noun—but the business should nonetheless remain vigilant to follow the rules of proper Mark usage when it is using that term as a brand name for the business’s products and services (an adjective).
B. Present Your Mark Consistently in Form and Format. Your Mark should always be presented consistently. Consistent repetition of your Mark in the exact same form helps consumers recognize and remember it. This, in turn, strengthens consumers’ association of your Mark with the specific quality and reputation unique to your business. So:
- Don’t vary the spelling or punctuation of your Mark; and
- Avoid presenting your Mark in plural or possessive forms. (However, this does not apply if your Mark is actually plural (like “BUNCHES”) or a possessive (like “BOB’S”).)
C. Make Your Mark Stand Out. Consider taking additional steps to make your Mark stand out as a unique identifier for your brand of products and services. For example, if your Mark is a word or a phrase (rather than a logo), differentiate the Mark visually from surrounding text. Present your Mark in ALL CAPS or in a different color font. Making your Mark stand out, reinforces the word or phrase as a Mark instead of a generic reference.
D. Use the Correct ®, TM, or SM Symbol and Use It Correctly. Proper use of the correct ®, TM, or SM symbol is crucial to preserving rights in your Marks for several reasons. It publicly reinforces that the word(s) or logo to which the symbol is affixed are being used as a Mark and not a generic name for goods or services, and it puts potential infringers on notice of your claim to rights in your Mark. Furthermore, in some cases, it may eliminate certain defenses available to those infringing your Mark and affect the types of infringement damages you might recover for an infringement of your Mark.
Here are tips on how to determine which is the correct symbol to use with your Mark and how to use that symbol properly.
- Use the ® symbol if your mark is registered with the USPTO in connection with the products and/or services on which the mark is being used in that particular instance.
- Conversely, don’t use ®—and do use either the TM or SM symbol, as applicable—if you have not obtained a USPTO registration for your Mark or if you are not using the Mark, in that particular instance, with the particular products or services listed in your Mark’s USPTO registration.
- Use the TM symbol when the Mark is being used in connection with products.
- Use the SM symbol when the Mark is being used in connection with services.
- Place the correct ®, TM, or SM symbol immediately following the Mark, not after the generic name of the product or service with which your Mark is associated. For example, for the Mark “BUZZ” registered with the USPTO for cloud data services, an example of appropriate usage would be “Use BUZZ® cloud data services”—not “Use BUZZ cloud data services®”. (If there was no USPTO registration for “BUZZ” or if “BUZZ”, is not registered with respect to “cloud data services,” you would change the ® to a SM symbol.)
EXCEPTION: As noted, sometimes a business uses the same term as both a Mark and as a name for the business itself. Trademark symbols should never be used where the business is merely referring to itself as a company or corporate entity (a noun), as opposed to a “brand name” for specific products or services (adjective).
Conclusion: Start the new year off right by making sure your business is using and presenting its Marks properly. Appropriate presentation and use of your Marks will: strengthen customers’ association of your Mark with the particular products or services with which it is associated; help you protect your Mark against infringement; and increase the value of your business’s unique “brand identity.”
If you have questions regarding trademarks and service marks, including selection, proper usage, and protection of these valuable business assets, contact Mike Stewart at mstewart@fh2.com or (770) 399-9500 for more guidance.
