Monday, March 15, 2010

The Proper Care & Feeding of Trademarks

Or, How Careless Use Can Lead to Abandonment

Once a trademark has been registered, it must be maintained or it will wither away and cease to function as a trademark.  To many that simply means periodic renewal filings with the United States Patent and Trademark Office (assuming you've registered it).  However, timely renewal filings are not enough.  Trademark owners must also guard against genericide - the death of their trademark through misuse.  If the public comes to regard a trademark as an apt term for the goods and services it is associated with, it is said the mark has become generic. A generic term cannot serve as a trademark.  Words such as "aspirin" and "cellophane" were once strong brand names.  However, they slipped into the public domain because of trademark misuse.  Similarly, if a trademark owner grants someone permission to use their trademark, but does not reserve the right to approve the manner of its use,  that trademark can lose its branding significance. 

Below are five rules or guidelines trademark owners must follow if they wish to avoid trademark abandonment and forfeiture.  

Rule 1: Avoid Trademark Misuse

Never use a trademark as a noun or a verb. Like the rules of grammar, there are rules governing the use of trademarks.  For example, a trademark must always be used as an adjective followed by a noun.  This principle requires that the trademark come before the common descriptive term for the goods.  If you say, "I lent John my Kindle," you have violated this principle. You can correct this violation by saying "I lent John my Kindle ebook reader."  Xerox spends large sums on educational advertising to remind people that Xerox is a trademark for document copying, not a descriptive term for photocopying.  Since a trademark needs a noun, you can position the word "brand" after the trademark.  An example of this is Pringle brand potato chipsDon't add an "s" or an "ing" to your trademark.  If you come across a use that violates these rule,  send them a polite letter correcting their trademark grammar. Never use a trademark in the plural.  "Proud publisher of Frommers" is incorrect.  "Publishers of the Frommer's Travel Guides" is the proper way to refer to this well-known travel guide series. Never use a trademark as a verb.  "Red Hat your entire network" is bad.  "Set up your entire network using the Red Hat Linux operating system" is good.

Rule 2: Your Trademark Must "Stand Out"

Since trademarks are used to distinguish products and services from one another, it is important to set trademarks apart from the text adjacent to it.  Distinguish trademarks online and in print by using an initial capital letter, or setting off the entire mark in CAPS or in bold, or by using italics or "quotes" to make the word or phrase stand out. 

Rule 3: Use Proper Trademark Notices

If you are a trademark owner (or a trademark licensee), it is important to use the proper form of trademark notice.  While trademark notices are not legal requirements, they have legal significance. Like a "No Trespassing" sign, a trademark notice gives notice of your rights.  That makes it more difficult for a trademark infringer to assert a good faith defense.  The proper form of notice for an unregistered trademark, is the little superscript "TM" (or "SM" if a service) in close proximity to the mark.  If the mark is registered with the United States Patent and Trademark Office, you may use the "®" symbol. If you are concerned about the trademark notice's impact on the aesthetic appeal of your marketing materials, you can place an unobtrusive asterisk or double dagger ( ‡) after the first and most prominent use of the mark.  The asterisk or double dagger should reference a footnote with the proper form of notice.  Acceptable forms include Reg. U.S. Pat. & Tm. Office,   Registered, U.S. Patent and Trademark Office, and __________is a registered trademark of _______. 

Rule 4: Police Your Trademark

After you've registered your trademark, begin monitoring how others are using it. If someone is using your trademark as a noun, consider sending them a friendly letter correcting their bad trademark grammar. Unfriendly letters should be reserved for trademark infringers.  Employers should monitor how their employees are using the trademark.  Educate them on the proper use of your trademark.  Conduct an internal trademark audit to ensure they are using your trademarks properly and consistently on packaging, promotional materials, advertising, web sites, and other materials.  And, if the way you are using your trademark today differs from what you registered with the Trademark Office years ago, call a trademark attorney.  Failure to use your trademark as it appears in your registration certificate, could complicate your ability to renew your federal trademark.  Many clients of the firm create style sheet containing helpful trademark guidelines, which include approved forms of your trade name, logo or slogan.  Share that style guide with your trademark licensees.  Consider posting it to your web site.  

Rule 5: Avoid Naked Licensing

What is naked licensing?  If a trademark owner grants (or licenses) someone the right to use their trademark on goods, federal law requires that the trademark owner exercise control over the goods being manufactured.   While the more you use a mark the stronger it becomes, if there's no quality control language in the license agreement granting permission to use a mark, it is considered a naked license.  The consequences of naked licensing is cancellation of the trademark registration and forfeiture of trademark rights.   While beyond the scope of this article, every trademark license agreement must contain a quality control provision.  From a policy perspective, naked licensing is bad because trademarks are symbols of quality as well as source identifiers.  If a licensor doesn't exercise control over the quality of the goods that bears its mark, that trademark owner is no longer considered the source of the goods.  The consumer, who  expects a trademark to speak to the quality of all goods purchased across all product categories, is therefore being deceived.  Trademark and unfair competition law abhors consumer deception.  The takeaway is trademark use agreements are a species unto themselves.  If the mark is not used in the manner prescribed by the trademark owner, or the quality of the goods varies over time (a good reason to include an contractual right to inspect in the license), it is a serious matter, as the trademark can be lost.  How much quality control is needed?  That's the subject for another article.

DISCLAIMER: This article discusses general legal issues of interest and is not designed to give any specific legal advice pertaining to any specific circumstances. It is important that professional legal advice be obtained before acting upon any of the information contained in this article.

The Copyright Permission and Libel Handbook: A Step-by-Step Guide for Writers, Editors, and Publishers (Wiley Books for Writers Series)LLOYD JASSIN is a New York-based copyright, trademark, publishing and entertainment law attorney.  An adjunct professor at NYU's Publishing Program, he sits on the advisory board of The Beacon Press, one of America's oldest independent presses.  He may reached at Jassin@copylaw.com or at (212) 354-4442.  1501 Broadway, Fl 12, NYC, 10036. Follow the Law Firm and Lloyd on Twitter at http://www.twitter.com/lloydjassin.

(c) 2011 - 2014.  Lloyd J. Jassin







No comments:

Post a Comment