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Victor G. Arcuri; All Rights Reserved. This article
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How To Use A
. . .Do
not use the trademark with a possessive
form: It is not correct to refer to “Word
Perfect’s” features. It is correct to
refer to the features of the “Word Perfect” program
Licensees I Franchisees: Do
not license others to use your trademarks except for the goods and
with which they are associated. Then exercise effective control over
the quality of the goods and services offered under the licensed
so that it continues to represent the goodwill connected with your
products. Failure of a licenser of trademark rights to reserve the
right to control the quality of the goods and services offered under
the licensed mark can be fatal. Moreover, those quality control rights
must actually be exercised. Exercise effective control over the use of
your work in labels, signs and displays. Inspect samples of the
associated goods, business premises and anything else that displays the
mark for the proper usage an appropriate quality. Be sure that your
licensees or franchisees do not utilize the trademark in a manner that
exceeds the license (for example, on other than the licensed goods or
services). Require them to enforce proper use of the licensed
5. Family of Marks: If
your business uses a group of trademarks which have a single component
common to each then creating an association among the various marks may
allow you to be able to prevent other businesses from using an other-
wise dissimilar mark having the same component.
“Kodak” trademark, for example, has spawned KODA-
trademarks, such as Kodacolor and Kodachrome)
If you decide to create a
“family” of marks, and to establish overall
protection which is greater than the sum of the parts, follow as many
of the following practices as possible:
Adopt a highly arbitrary
component capable of being used, recognized, and protected by itself.
Make a conscious effort to use,
display and advertise the "family" marks together in such a way that
consumers become aware that the family exists and associate the family
with the trademark owner. Use advertising techniques such as "Another
product in the '[Trademark]' family of computer programs."
Advertise in this manner continuously and, if
MANAGEMENT AND RECORD KEEPING
As the owner of a mark it is incumbent upon you to
not only use the mark correctly but also to keep records of such use.
In this regard we strongly suggest you appoint someone to be your
Trademarks Coordinator. This person should administer all aspects of
your trademark program. They include;
your employees in proper use of your trademarks,
Reviewing and clearing all advertising and
promotional copy prior to publishing ,
your customers and competitors of your marks and ownership in same,
with the assistance of your trademark agent, whether to register the
trademarks with the Canadian, American or other Trademark Office,
Deciding, with your attorney's advice, what
action to take against infringers of your trademarks .
Training: Make sure your
employees (and family helpers) - from mail clerk to
chief executive, and particularly marketing, advertising, packaging,
and secretarial employees -- know what trademarks you are using and how
they are to be used .
shows that a printed trademark policy generally does not
provide sufficient reminder unless supplemented with periodic meetings.
Make sure any outside advertising or public
relations firms you retain know what trademarks you are using and how
to use them. Review all advertising and promotional copy for correct
and most effective trademark usage .
and Infringement: Your
employees and customers should watch for misuse and infringement of
your trademarks by others. Misuse of your marks would include making
changes in your marks, even unintentionally, or using your trademark as
the common name of the goods or services. Infringing marks would
include use by another company of a product name or logo that, when
used on their product, so closely resembles one of your trademarks as
to cause confusion or mistake, or deceive customers.
trademarks coordinator should collect information on infringement and
misuse, and consider (with the advice of your attorney) whether a
demand letter should be sent or other action taken. Employees should
not take action on their own if they detect misuse or infringement .
Records: Establish a file for collecting
documents relating to your trademarks. When it comes to determining who
used a mark first, establishing distinctiveness, (i.e. "secondary
meaning"), or proving continuous use of the mark in commerce the
company with documented historical records is in a more favorable
position. This is critical in the case of a mark that is not
registered. Your file for each un-registered mark should be used to
Records, letters, invoices,
receipts and other documents related to the adoption and first use of
your mark; Copies of agreements with outside graphic artists assigning
right, title, and interest.
Copies of all advertisements that use the mark,
dated as of their appearance, together with records of company expenses
for that advertising;
Yearly summaries of the amount of
product sold under the particular mark.
Copies of each printed label and
promotional material as they are delivered from the printer along with
a copy of the printers invoice.
Records relating to any changes
in the label; and any demand letters to others who try to pirate your
mark by using the same or a deceptively similar mark.
Once your mark is registered your
certificate of registration is evidence of ownership as of the date on
the certificate. From that date forward you are not required to prove
you used the mark as of a particular start date. However, you may be
required to prove that the mark is still in use. To prove the mark is
still in use you should maintain at least a two year record of all of
and Last Step
that you know how to use your unregistered trademark correctly to
secure trademark rights, and have already decided to make the changes
to your web site, stationery etc. as suggested above, we think you
should also give consideration to confirming you are not infringing on
the rights of others.
For a fee of $US 25.00 ARVIC, will prepare a search of both the Canadian and
American trademarks data bases. To order the search go to http://www.tmweb.com/search.asp
, or call us, toll-free.
trust, now that you have read this article, that you will come to the
conclusion that you should include a trademark specialist on your list
of professional advisors. The staff at ARVIC, welcome the opportunity
to be your advisor.
this article has left you with any unresolved questions, then we ask
that you direct them to us. We further ask that you take the time to
learn all about ARVIC, who we are, what we can do for you and why you
should employ us.
Arcuri, President Arvic Search Services Inc., Registered Trademark Agents and Corporate
Paralegals since 1982; Across
North America Toll Free: 1-888-227-8421
http://www.arvic.com & http://www.tmweb.com
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