Are You Protecting Your Trademark? Use and Protect Your Trademark Correctly or Risk Losing Your Mark.
Your Brand is Critical to Your Success
For a lot of us business owners, our brand is the key driver of our growth and success. Developing and maintaining your message and a theme that stands out from the competition can be a critical leg up, and a trademark is one of the best ways to develop and maintain that message.
What is a Trademark?
A trademark is a symbol, word, or words legally registered or established by use as representing your company, your services, or your product. A trademark can be any type of device used to identify the source or origin of a product or service, including:
- “Non-traditional” elements like sounds, smells, and colors.
They are important for these reasons:
- They distinguish your products and services from competitors;
- They indicate to others that your products are of high quality and worth protecting.
Maintaining and protecting your trademark is critical to your brand!
I thought just having a trademark was enough? What happens if I don’t protect my trademark?
You did the right thing: you hired a lawyer and obtained your trademark registration, either with the federal government through the United States Patent and Trademark Office (USPTO) or with your particular state government. Many of us think that is all we need to do – but there is more to it than that.
Did you know you can lose your trademark even after you’ve already registered it?
There are two key concepts you need to remember: USE and PROTECTION
You can lose your trademark if you:
- Misuse your trademark;
- Don’t protect your trademark from infringement or dilution.
Using your trademark improperly may:
- Diminish its distinctiveness: its ability to set your products or services apart from someone else’s.
- Result in the abandonment of trademark rights: the actual loss of one of your trademarks!
- Lead to the infringement of your trademark by implying to others that you will not enforce your rights in the mark.
The takeaway: Don’t get complacent! You have to work to make sure your trademark is protected.
How do I protect my Trademark?
STEP ONE: USE YOUR TRADEMARKS PROPERLY
- Monitor your competitors for infringements and misuses of your trademarks.
- Take appropriate action quickly whenever infringements and misuses of your trademarks are identified.
- Implement appropriate requirements and quality control when permitting others to use your trademarks.
- Maintain records demonstrating the use, strength, and recognition of your trademarks.
EXAMPLE: Trademarks should be used as adjectives followed by a generic modifier, and not as nouns or verbs.
Because trademarks are not nouns, they should not be used in the plural form unless the trademark itself is in plural form.
EXAMPLE: Trademarks should be distinguished from surrounding text to emphasize their brand name significance.
EXAMPLE: Trademarks should be used consistently and should not be altered. For example, do not:
- Abbreviate the trademarks
- Change the colors or typeface of a logo trademark
- Add words or design elements to the trademarks
- Hyphenate the marks unless the trademark itself is hyphenated
We have seen these common mistakes made by our clients as well as others. And we don’t blame you – it’s easy to make mistakes like this when your team is not properly educated on the use and protection of your trademarks. But if you are going to go through the trouble of developing and registering your trademark, it would be a great shame to lose all of that hard work because of misuse.
Use Proper Trademark Symbols
We see this one all the time. You’ve slapped that little “Ⓡ” or “™” all over your website. That’s good – just make sure you use the right one. In the US the proper symbol to use depends on whether the trademark is registered with the USPTO for the specific products or services for which the mark is used. Also, the term “SM” applies to certain trademarks used just to identify services.
Proper trademark notice symbols should be used with your trademarks. Also, don’t use the copyright symbol (“©”) for your trademarks.
Oh and one more thing: you might be wondering why we are not using the trademark symbols when mentioning certain brands in this article. Well, that’s because we are using the trademarks under the “fair use” doctrine. More on that some other time.
Develop and Follow Brand Standards
Don’t be complacent. Develop your own personal brand standards and explain to your team how your trademarks should be presented.
For example, you’ll want to include guidelines about each trademark’s:
- Appearance of graphic elements.
EXAMPLE OF HOW TO DO THINGS THE RIGHT WAY – VELCRO:
Velcro, the maker of the hook and loop fastener found on so many kids’ shoes, is very cognizant of the importance of protecting its famous brand name and has prioritized its trademark protection. As part of its brand strategy it has recently engaged in an online campaign to protect the strength of its brand. Among other things, it has produced a YouTube music video and provided online resources instructing on the proper use of its trademarks. The video can be found at https://www.velcro.com/legal-and-privacy/dontsayvelcro/ and its trademark guidelines can be found here: https://www.velcro.com/about-us/trademark-guidelines/.
BE LIKE VELCRO! PROTECT YOUR BRAND!
STEP TWO: PROTECT YOUR TRADEMARKS
Okay, so you have instructed your team to use your trademarks correctly and feel comfortable that you are using your trademarks in the way they should be used. The next step is protecting your trademarks from would-be infringers!
Follow These Guidelines to Help Ensure That your Marks Remain Protected:
- Report suspected infringement or misuse.
- Do not allow others to use your trademarks without appropriate internal approval.
- Maintain documents and records showing use and promotion of your trademarks.
A lot of our clients will say: “Well, my friend/neighbor/cousin is using our mark for a small project and its not a big deal.” IT IS A BIG DEAL. Don’t do it. And if you must do it, make sure you have legal documents in place protecting your trademark!
Not reporting suspected infringement or misuse can:
- Result in delays that limit legal remedies.
- Weaken trademarks and ultimately cause their loss.
The US is littered with trademarks that were originally protected but now no longer have trademark protection. Have you ever heard of Aspirin, Thermos, or App Store? All phrases that used to be protected but that are no longer protected by trademark.
If you are going to let someone else use your trademark, make sure you have a licensing agreement in place! The agreement should specific your rights to the trademark and should have specific requirements that the third party use it only in a way that does not harm your intellectual property rights. If you don’t get the license agreement in place, not only could you lose your trademark but you could expose yourself to liability!
EXAMPLES OF MATERIALS TO KEEP
Hold onto these:
- Product packaging with your trademark on it.
- Advertising and promotional materials with your trademark on it.
- Sales documents relating to your trademarked products and services.
- Market research showing customer recognition of your products, services, and trademarks.
One final note: if you are going to call out a competitor, sometimes it helps to use honey instead of vinegar. Back in 2012 Jack Daniels (purveyor of whiskey) sent out a cease and desist letter to a popular author named Patrick Wensink, but they sent the letter in a polite and constructive way, offering to cover the cost of changing the trademark. It went viral and Jack Daniels got lots of great publicity. A copy of the letter can be found here: https://brokenpianoforpresident.files.wordpress.com/2012/07/jd-letter-entire-big1.jpg. No one likes a bully. Of course, that doesn’t always work. If you are dealing with a bully yourself, you might have no choice but to come out strong!
Our Two Cents? Just registering your trademark is not enough. Make sure your (1) use your trademark correctly and (2) protect your trademark!