Give Your Brand Some Love


When it comes to trademarks, the phrase “use it or lose it” is fitting.

If a trademark is used properly, your rights in the mark can last forever.  Fun fact:  The oldest registered trademark in the USA is more than 130 years old, according to the U.S. Patent and Trademark Office (meaning it was registered in 1884)!

Other trademarks haven’t fared so well.  For example, the mark DRY ICE used to function as a brand – meaning it distinguished a particular product from those sold by other businesses.  Over time, however, consumers started using this mark incorrectly, and eventually understood it to be the generic name of the product itself rather than the source-indicating brand (i.e., all mist produced by solid carbon dioxide is now called “dry ice”).  As a result, everyone – not just the trademark owner – can now use this mark to refer to the product.

So, how do you use a trademark “properly” to avoid losing these important rights?  Let’s face it:  You’re in a long-term relationship with your brand, so it’s important to give it a little love.  The key is remembering that trademarks are special.  What we mean is that trademarks are different from ordinary words, so they should be treated as such.  The more a trademark owner can do to make its mark stand out from the words around it, the stronger that mark will be.

Below, we’ve provided some “dos and don’ts” of proper trademark usage, so that your love – um, trademark rights – will have a better chance of standing the test of time:

1. Treat your trademark right: DO use the mark with a “descriptor,” rather than as a generic term.

Use your trademark as an adjective that modifies a noun.  It’s best not to display it without a descriptor on packaging or in advertising materials – especially if your mark is borderline descriptive to begin with.

Encouraged:  Eat BRAND NAME® hamburgers to satisfy your hunger.
Discouraged:  Eat BRAND NAME® to satisfy your hunger.

An easy way to see if you’re using your trademark properly is to temporarily remove the mark from the sentence – if it leaves a complete sentence, then you’re probably using it the right way!

2. Give your mark some respect: DO use the correct “trademark notice.”

“Trademark notice” is another name for the encircled-R symbol displayed after registered trademarks and the superscript TM symbol displayed after marks that are not yet registered.  Using the correct notice in a consistent manner alerts others that you’re using your mark as a source-indicating brand.

Ideally, the ® or TM symbols would be used with the mark each time it appears, or at least with the first or most prominent display of the mark.  If your advertising materials contain multiple pages, try to display the trademark notice at least one time on each page, in case portions of the materials are ever distributed separately.

3. Show off your mark! DO distinguish your trademark from surrounding text.

Make sure your customers are reminded of the brand significance of your trademark each time they see it by highlighting the mark on packaging and in advertising materials.  You can do this by capitalizing the mark or displaying it in a distinct font or stylization.

Encouraged:  Eat BRAND NAME® hamburgers to satisfy your hunger.
Encouraged:  Eat Brand Name® hamburgers to satisfy your hunger.
Encouraged:  Eat Brand Name® hamburgers to satisfy your hunger.
Encouraged:  Eat Brand Name® hamburgers to satisfy your hunger.

Discouraged:  Eat brand name hamburgers to satisfy your hunger.

4. Stand by your brand (cue Tammy Wynette music here): DON’T change the form of your trademark.

It’s important to display your trademark in the exact same form in which it was registered.  Otherwise, you may not be able to provide the U.S. Patent and Trademark Office with proof that the mark is still being used when it comes time to maintain or renew the registration.  It can be easy to inadvertently modify a mark – especially when you’re using it with surrounding text.

For examples of what not to do, check out the following common errors:

Eat BRAND NAMES® hamburgers to satisfy your hunger.
Tip:  Don’t use a mark in a plural form—instead make the “descriptor” plural.

Eat BRANDD NAME® hamburgers to satisfy your hunger.
Tip:  Don’t change the spelling of a mark.  Similarly, don’t modify a logo by changing things like the color or font.

Eat BRND NAME® hamburgers to satisfy your hunger.
Tip:  Don’t abbreviate a mark.

Eat JOE’S FAMOUS BRAND NAME® hamburgers to satisfy your hunger.
Tip:  Don’t add words to (or delete them from) a mark.

Eat BRAND NAME’S® hamburgers to satisfy your hunger.
Tip:  Don’t make a mark possessive.

By following these tips, you and your trademark will be on the road to “happily ever after”!

This entry was posted in Brand Management, Brand Protection and tagged , , , , by .
Date Published: June 28, 2016
Kelly M. Horein is an associate on the Trademarks team of the firm’s Intellectual Property Practice Group. Kelly’s practice encompasses all aspects of brand management, including domestic and international trademark clearance, registration, and enforcement. When litigation is necessary, Kelly assists clients with disputes, including trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, and trademark litigation in federal court. In addition, Kelly prepares and negotiates intellectual property agreements, counsels businesses on website development and social media issues, and assists them with assessing product packaging for compliance.