Trademark rights are so powerful because they can last forever. You can keep using your trademark over years and build up decades of goodwill which can be a very valuable asset. However, to keep your trademark strong you have to take care of it. It's not hard but there are a few things you need to remember. You must mark your trademark, use it correctly, police it, and maintain it. We'll discuss marking and use first. Trademarks are special. When you refer to them in writing you should make sure that they stand out. You should mark them, why? You're putting people on notice that you claim rights in the mark. Not only will this help you later if you want to claim that another person infringe your trademark but the notice itself might actually keep people from abusing your mark in the first place. How do you make the mark standout? Well, if it's a word you can put it in all capital letters or you can capitalize the first letter of the trademark so long as the rest of the words describing the goods or services are not capitalized. For example, capital C Coca Cola, lowercase carbonated beverage. You can change the font or the color of the trademark versus the rest of the text or most importantly you can add the correct symbol after the mark. You may have seen the TM or SM symbols before. These are trademark indicators. Use the TM or SM If your trademark is not federally registered. Either because you're relying on common law rights because you have a state trademark or because your mark is only in the application phase of the federal registration process. Use TM for trademarks and SM for service marks. Once the mark is federally registered you can change the symbol you use to that R in the circle. Don't use that symbol before registration though or it might interfere with your being able to get approval for your mark. Sometimes it's impossible to make the mark stand out or use the symbol every time you use the mark. For example, on your website where you use the mark dozens of times or in a marketing brochure. What do you do in that case? You don't have to use the symbol at every mention of the mark but you should use it at the first and most obvious mentioned especially in a title. The objective here is to put people on notice that you claim this trademark as your. Just mark it sufficiently enough to do that. You need to make a trademark obvious through your separating it out from other text and marking it correctly. But you also have to be very careful of how you use the mark. What do I mean? Well, a couple of things. First, make sure that your use is consistent. Use the same form of the trademark every time and certainly the same form as you used in your application if you filed for a trademark registration. For example, with a word-mark don't shorten it, change the spacing or punctuation or add an S or any other letters. If you have a stylized mark that you claimed font or color over, don't change the font or color. If you have a logo, don't change the picture even just a little bit. As an aside one exception is if you filed a logo in black and white. Your registration protects the use of the logo in any color, or if you filed a word-mark in all capital letters your registration does protect the use of the word in any font or color. However, there are business reasons to use a consistent mark anyway. Since you're trying to build up consumer association you might want to consider deciding on one or two versions of your mark and using them consistently to build up that brand identity and goodwill. You're reading described a situation where one user of a logo ended up not being able to challenge another user who was clearly trading off of that first two users brand because the first user had not used their logo consistently over time. What lesson do you take from this cautionary tale? You should decide on your final version of the mark before you file an application and always use your mark consistently. If you find after a couple of years that you have to change your mark, file another application to cover that new version of the mark. Then from then on use your new mark consistently. Also make sure that you're using the mark for the goods and services that are covered in your application. If you broaden your use over time to cover additional goods or additional services you should file a trademark application in additional classes. All of this goes to say that your use needs to be consistent. But second, make sure that your trademark use is correct. What does that mean? Trademarks are adjectives. As brands they connect a source to goods and services. They never are nouns, they are the goods themselves or verbs that describe the services the trademark brands. For example, Google is a trademark. A correct use would be to say, we use the Google search engine to do research. Incorrect uses of the Google trademark would suggest that someone use Google, the noun or ask them to Google a term, the verb. What happens if you're sloppy about your use of trademark and your trademark starts to be your goods or services instead of just your brand? Well, you can lose rights to keep others from using the mark. This is called genericide. When your brand becomes synonymous with the product or service that you offer, your competitors start to need to use that word as well to market their goods and services. This genericide has happened to some of the strongest marks in history. Some examples include aspirin, and cellophane, escalator, zipper. So you might say is it so bad? If everyone knows your name isn't that the goal of branding to begin with? Well, it is bad because you no longer control the use of that name and bad quality products can be sold under your name now too. Also your customers can't use your name to find only your product. Brands that can be worth millions of dollars in goodwill can be lost. So, what can an individual or a company do to prevent genericide from happening and to keep them mark strong? You can educate all users of the mark, the employees of your company, the customers of your goods and services, and anyone to whom you licensed the mark. You should educate them in proper use. That's where the Velcro video you watched in preparation for this session comes in. This was a use of humor for the lawyers to educate their employees and consumers about the proper use of the Velcro proprietary mark. What else can you do? You could consider creating and mandating a strict use of what we call a style guide. A style guide sets forth the rules about the use of the mark, the exact font, the color, the use. By setting forth a style guide you make sure that everyone is on the same page. What else can you do? You can make sure that all outward facing uses of the mark are controlled and consistent. We're talking about all advertising, the website, any instruction manuals or forms that your company puts out or use manuals. As much as possible you try to shut down public misuse. Here are some examples of ads that the Xerox Company and the Nintendo company took out to guide consumers. These sorts of consumer facing efforts use humor but the content is serious because there's a very real risk of losing goodwill.
