Remember that trademark rights are established by use. In order to maintain your claim over a mark, you have to be sure that you are using the mark properly. This page covers a lot of useful advice to keep in mind when it comes to the use of your trademark. While trademark registration is an important part of the process, there's more that you need to do to keep your trademark protection in good condition. Don't forget to take a look at our Trademark FAQ for more information.
We're all familiar with what happens when a term that was originally a trademark becomes adapted into everyday language. You'll often hear people talking about going out to play a game of "frisbee" or using the internet to "google" something. While this may be how language naturally evolves, it can be a problem for the trademark owners. If a trademark is considered to have become generic, then you can no longer claim exclusive rights to its use — it has simply become part of the language!
Did you know that both kerosene, zipper, and escalator were originally trademarked names? They have long since become generic terms, and anyone can now describe any slide fastener as being a zipper, regardless of whether or not it was built by G.F Goodrich.
To avoid your trademark becoming generic, it is important that you use your trademark properly. Failure to use your trademark in the correct manner can actually provide the basis for competitors to claim that the mark is generic and therefore not protected.
You will never see Google talk about "googling" something. This is because the trademark Google is not a verb — it is not something you do. Rather, it is an adjective: it describes a certain search engine. So, you can do a search on the Google search engine, but you cannot google something.
This is important. It might seem like a company would want their trademark to become so widespread that it comes to stand in for a term in the natural language. The problem is that if "google" became a generic term for performing an internet search, then Google could not prevent any competitors from referring to their internet search tools as "googling". Companies who fear that their mark is in danger of becoming generic will often employ advertising campaigns to remind the public of the proper use of their mark, and will often contact businesses or websites which are using the mark incorrectly as a generic term.
Always remember the following rules for properly using a trademark:
The entire purpose of a trademark is to identify your brand to consumers. You want your trademark to be as recognizable as possible, and that means ensuring a consistent appearance and format of your mark. You want people to instantly be able to recognize your mark, ideally even from a distance. In order for your mark to be so distinguishing, it's important that you use it consistently.
You want to be consistent both on how the mark appears, and also where it appears.
The location of the mark is important so that customers can easily see it. But it is also part of the overall branding of the product itself. Having a distinctive mark which always appears in the same spot — whether that's in one of the corners of the box, front and center, or in some particular place on the product itself — incorporates the mark into the overall look of te product or packaging itself, and allows for customers to identify your brand immediately. You never want someone to have to look for your trademark.
Consistency in appearance is just as important. Even if you did not register your trademark with any specific stylization, you want to make sure that you always represent your mark using the same text. Again, this is to ensure that your mark is immediately recognizable to consumers, more than it is to meet the requirements of avoiding "likelihood of confusion" for trademark infringement purposes.
Accidental trademark infringement is still infringement, and the best case scenario, if you get caught, is that you are told to stop using your chosen mark. Trademark infringement can also lead to fines and damages, and so it is obviously best avoided.
Performing a trademark search is an essential first step in selecting a mark. We recommend that you do a preliminary search yourself, and then take advantage of a professional USPTO trademark search service to rule out everything you may have missed. You can also search the internet and yellow pages for unregistered trademarks.
Remember that the key issue is "likelihood of confusion". If you see any marks which are similar enough to the one you wish to use that a reasonable person might confuse one for the other, then you can consider that mark taken.
The stronger a trademark is, the broader protections are afforded to the holder. Weaker trademarks can only be used to cover the use of the mark in specific contexts, whereas a very strong mark will provide exclusive rights to the owner. Roughly speaking, there is a scale of trademark strength ranging from coined terms to generic marks.
Always avoid generic terms. Coined or arbitrary terms are generally the best. Remember that the purpose of your trademark is to make your product or service distinguishable to consumers. Apple is such a strong and memorable trademark for computers precisely because it's a term that is in no other way associated with that field. Descriptive terms, on the other hand, area almost never memorable since they don't stand out and fail to set your goods apart from competitors.
There are certain marks which are not available for use as trademarks either because they are prohibited by law or because they convey no rights.
If your trademark makes use of any foreign words, you want to make sure that they transfer well into English. For example, you may not want to call your winter clothing brand Phoque (French for seal). Similarly, if your product is meant for export you should check to see how it would come across in foreign languages.
Further, you want to consider regional variations in English. For example, most English speakers outside of the U.S pronounce "z" as zed, and so E-Z Wash would not come across the way you might have wanted. The last thing you want is to accidentally offend potential customers!
Not only is this the polite thing to do, it's also how to avoid getting sued for trademark infringement. Whenever you use someone else's trademark, be sure to acknowledge their rights. For example, Frisbee® is a registered trademark of Wham-O.
Registering your trademark with the United States Patent and Trademark Office provides several benefits. Principal amongst these is that registration is considered to serve as nationwide notice of your claim to the trademark. Registration allows you to use the '®' symbol. to sue in federal courts, and to seek damages from infringers. Further, after 5 years of registration, a trademark may become eligible for "incontestable" status.
See our Trademark FAQ for more information on registering with the USPTO.