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©1995-2000 Victor G.
Arcuri; All Rights Reserved. This article may not
be reproduced or copied in any form or electronically without the
express written permission of the author.
~ How To Use A Trademark Correctly ~
by Victor G. Arcuri, President, Arvic Search
To protect your trademark’s value and
keep it alive, it is critical that owners of marks understand that
there is a correct way to use, display and serve public notice of your
ownership in your brand names or trademarks. Your failure to
observe these rules will result in your mark loosing its
distinctiveness and falling into the public domain. In simple terms, if
you do not use it correctly you will loose it. The following guidelines
are a suggested policy for protecting your trademarks regardless of the
fact that some of them might not be registered. These guidelines should
be distributed to and followed by your employees.
want the world to know that the names you give your products or
services are in fact yours. You do this by giving PUBLIC NOTICE of the
fact that you have adopted and are using selected words, phrases or
designs as trademarks. Use the proper trademark notice sufficiently to
give actual notice. Use such notices for each trademark in at
least one prominent place in every medium in which the trademark
appears (for example, in advertising, packaging, labels,
reference manuals and brochures), but not so frequently as to distract
the reader .
trademarks registered with the US Patent and Trademark Office, place
the ®symbol in
the upper right-hand corner of the mark. For marks registered with the
Canadian Intellectual Property Office, place the tm; symbol in the
upper right-hand corner of the mark. DO NOT USE THE ®
marks registered in Canada .
an alternative, or in addition to the use of the symbol, give public
notice at or near the bottom of the medium where the marks are displayed.
For marks registered in the USA use the
phrase “Registered in the U.S. Patent and Trademark
Office” or the abbreviated version “Reg.
USPTO.” For marks registered in Canada use the phrase
“Registered in the Canadian Intellectual Property
Office” or the abbreviated version “Reg. CIPO
“Common Law” Trademarks:
Trademarks do not need to be
registered in order to have legal protection against infringement. To
serve public notice that this is your mark place the tm symbol
in the upper-right hand corner of the mark. Do not use the ®
symbol unless or until federal registration is actually issued in the
USA. False use of a public notice of the ® symbol can result in
the denial of federal registration or refusal of enforcement by a court
it is not possible to use the above notices, a notice on the bottom of
the page should identify each of your trademarks. If practical, place a
small asterisk in the upper right-hand corner of the trademark, along
with the applicable asterisked notices at the bottom of the page
®the property of XYZ Company.
Reg. USPTO” (for US registered marks).
tm; the property of XYZ
Company. Reg. CIPO” (for CDN registered marks).
“*tm; the property of XYZ
Company.” (for all unregistered marks used
in any country).
a number of trademarks are used within the same page, a notice such as
the following, may be used;
and “WIDGET” are trademarks of XYZ Company. Reg.
and “WIDGET” are trademarks of XYZ Company. Reg.
and “WIDGET” are trademarks of XYZ
is a common courtesy, but not legally required, to
acknowledge the trademarks of others used in comparison advertising
Materials : Your objective is to make the
mark stand proud of the rest of the text. In business letters, faxes,
e-mail or memos, your trademarks may be identified by use of capital
letters, bold face type, larger font size, different color, italics, or
quotation marks. We would not recommend the use of underline or double
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Use : If you export products, be aware that use or
registration of a trademark in either Canada or the United States may
not be given the same effect in a foreign country. A number of
countries consider use of the symbol to be illegal if the mark has not
been registered within that country. Therefore, all goods and promotion
materials shipped to or used in a foreign country you should use the
tm; symbol rather than the ®. This is particularly important if
you are a Canadian exporting to the USA. We strongly suggest you
investigate the trademark registration requirements of the foreign
country before you ship your goods .
If significant foreign marketing is
contemplated, registration in the pertinent foreign countries should be
pursued. In some countries, a registration can be based on
“proposed use” and the first party to file its
application becomes entitled to prevent others from registering the
mark. Some foreign companies make a business out of registering U.S.
and Canadian trademarks for the purpose of selling them back when you
attempt to enter the foreign market. You are protected against this
practice in both Canada and the USA .
Failure to use at least one of the
approved notices of federal registration may waive certain remedies for
infringement available under U.S. or Canadian law.
Proper Use of a Trademark
most effective trademark use is consistent and continuous.
A mark can fall into the public domain
if used carelessly, and registration can become more
difficult if the company’s use of the mark has been
incorrect. The main way to prevent a mark from becoming public property
is to show that the mark is not merely descriptive of your
product’s characteristics. It is your badge of distinction
and not the name for the product. Here is a collection of rules for you
to follow .
1. Adjective:Always use your trademarks as
adjectives, not as nouns. For example, it is not correct to refer to
“xeroxes.” It is correct to refer to
“Xerox” copiers or copies. Refer to your
[Trademark] software or programs, rather than using that term standing
alone as the name for the product .
2. No Plurals: Use
your trademarks consistently, exactly as designed. Do
not use the trademarks in plural form. Correct “Order three
IBM computers,” not, “Order three
IBM’s.” Unless your mark specifically uses a lower
case initial letter, it should always have a capitalized initial letter
or be set out in all capitals .
Changes: Do not change the mark through
additions, prefixes or suffixes, unless you intend to create another
here for the rest of the article on Trademarks
: email email@example.com
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