©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 Services Inc.

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.

Trademark Notices:You 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 .

Registered Trademarks:For 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 ® symbol on marks registered in Canada .

As 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 .”

Unregistered “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 .

Exceptions:  When 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).

When a number of trademarks are used within the same page, a notice such as the following, may be used;

“GADGET” and “WIDGET” are trademarks of XYZ Company. Reg. USPTO” or

“GADGET” and “WIDGET” are trademarks of XYZ Company. Reg. CIPO” or

“GADGET” and “WIDGET” are trademarks of XYZ Company”

It is a common courtesy, but not legally required, to acknowledge the trademarks of others used in comparison advertising .

Printed 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 underline.

Foreign 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

The 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 .

3.. No Changes: Do not change the mark through additions, prefixes or suffixes, unless you intend to create another trademark. 

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