The following guidelines are a suggested policy for protecting your trademarks. These guidelines should be distributed to and followed by all of your employees.
I. TRADEMARK NOTICES
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 reference manuals and brochures), but not so frequently as to distract the reader.
A. Registered Trademarks. For trademarks registered with the US Patent and Trademark Office, place ® in the upper right-hand corner of the mark.
As an alternative, or in addition to the symbol, give notice that the mark is federally registered by using the words "Registered in the U.S. Patent and Trademark Office" or the abbreviated version "Reg. US Pat. & Tm. Off."
B. Unregistered ("Common Law") Trademarks (TM). Trademarks do not need to be registered in order to have legal protection against infringement. Place (TM) in the upper-right hand corner of the mark.
Do not use the registered trademark designations unless and until federal registration is actually issued. False use of a notice of federal registration can result in the denial of federal registration or refusal of enforcement by a court.
C. 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 as "Registered in the U.S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." -(for registered marks) or "Trademark of [XYZ Company]" (for unregistered marks). If practical, place a small asterisk in the upper right-hand corner of the trademark, along with this asterisked notice at the bottom of the page.
When a number of trademarks are used within the same printed material, a notice such as "WIDGET and WADGET are trademarks of XYZ Company. Reg. U.S. Pat. & Tm. Off." may be used.
It is a common courtesy, but not legally required, to acknowledge the trademarks of others used in advertising.
In typewritten letters and memos, your trademarks may be identified by use of capital letters, bold face type, or quotation marks.
D. Foreign Use. If you export products overseas, be aware that use or registration of a trademark in the United States may not be given effect in foreign countries. A number of countries consider use of the ~ symbol to be illegal if the mark has not been registered within that country. For that reason, for sales and promotion in foreign countries, it is recommended that either the " symbol be used (rather than ~), or that further research be done on the trademark registration requirements of the country involved.
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. trademarks for the purpose of selling back to the U.S. company the rights to use those marks in the foreign country.
If you do not, or cannot, use the e symbol to identify a U.S. registered trademark, you should, in addition to using the " symbol, use one of the alternative notices of federal registration (the words "Registered in the U.S. Patent and Trademark Office" or the abbreviated version "Reg. U.S. Pat. & Tm. Off.") Failure to use at least one of the approved notices of federal registration may waive certain remedies for infringement available under U.S. law.
II. 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 and to show that the mark is not merely descriptive of the product's characteristics is to use the trademark as your badge of distinction and not as the name for the product.
A. Adjective. 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.
B. No Plurals, No Changes. Use your trademarks consistently, exactly as designed. Do not use the trademarks in plural form. (Say, "Order three Apple computers," not, "Order three Apples.") 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.
Do not change the mark through additions, prefixes or suffixes (unless you intend to create another trademark). Do not use the mark 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.
C. Monitor Licensees/Franchisees. Do not license others to use your marks except for the goods and services with which they are associated. Then exercise effective control over the quality of the goods and services offered under the licensed mark, 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 and appropriate quality. Be sure that your licensees or franchisees do not utilize the mark 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 marks by their employees.
D. Family of Marks. If your business uses a group of trademarks which have a single component common to each, creating an association among the various marks, it may be able to prevent other businesses from using an otherwise dissimilar mark having the same component. (The basic "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 which is 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 possible, heavily.
III. MANAGEMENT AND RECORD KEEPING
A. Trademarks Coordinator. Your marketing director, or someone specifically designated as trademarks coordinator, should administer all aspects of your trademark program. This should include (1) training your employees in proper use of your trademarks, (2) reviewing and clearing advertising and promotional copy, (3) deciding, with the assistance of your attorney, whether to register the trademarks with the U.S. Patent and Trademark Office, (4) deciding, with your attorney's advice, what action to take against infringers of your trademarks.
B. Training. Make sure all your employees -- from mail clerk to chief executive, and particularly marketing, advertising, packaging, and secretarial employees -- know what trademarks you are using and how to use them correctly. Experience 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.
C. Misuse and Infringement. Your employees should watch for misuse and infringement of your trademarks by other companies. 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.
Your trademarks coordinator should collect information on infringement and misuse, and consider (with the advise 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.
D. Records. Establish a file for collecting documents relating to your trademarks. When it comes to determining who first used the mark, or to establishing distinctiveness of the mark in commerce (i.e., "secondary meaning"), the company with a better documented historical record is in a more favorable position.
Your file should be used to collect: (1) records, letters, invoices, receipts and other documents related to the adoption and first use of your mark; (2) copies of all advertisements that use the mark, dated as of their appearance, together with records of company expenses for that advertising; (3) yearly summaries of the amount of product sold under the particular mark; (4) records relating to any changes in the label; and (5) any demand letters to others who try to pirate your mark by using the same or a deceptively similar mark.
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Last updated on 20 October 1995.