Proper Trademark Use

Proper trademark use is vital to obtaining and maintaining trademark registration.

When you first adopt a trademark, you may use the TM symbol. You may only use the R symbol after obtaining a trademark registration.

Proper Trademark Use

  1. Identify the trademark that you registered.
  2. Identify the goods and services that it is registered for.
  3. Use it on its own in on a product or website in a font size and style separate from other nearby text or it may be vulnerable in a section 45 cancellation proceeding.
  4. Make sure that the trademark font is legible.

 

Strategies Trademark Proper Use Video

Presentation by Cheryl Greenlee, an attorney with Bendix commercial vehicle systems in Elyria, Ohio.

 

Strategies to use in teaching your business stakeholders trademark proper use.

  • Engage the engineering and product management teams together with the communications and marketing teams as soon as the trademark is cleared to ensure proper marking.
I’ve worked in both the engineering and legal departments at a commercial vehicle brake system manufacturing company. I’ve learned that there is a gap between the departments working to obtain strong trademarks and those departments tasked with putting those 00:24
trademarks to use hopefully some of
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these strategies will work for you the
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legal department can assist in guiding
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the implementation of trademarks in
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addition to the clearance and
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registration process first you should
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engage the engineering and product
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management teams together with the
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communications and marketing teams as
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soon as the trademark is cleared to
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ensure proper marking remind your
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stakeholders the proof of use is
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required for the entire registration
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period they should be able to provide
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you proof of use at any time not just
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every 10 years in response to a request
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from a relevant trademark office as you
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know there are few exceptions and
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trademark law to the requirement that
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the part or the packaging must be marked
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with the trademark if the trademark is
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already on the component engineering
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will need to review the parts affected
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to change the common law trademark
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symbol to the registered trademark
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symbol when the trademark is registered
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in the United States in this example
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standings and moldings may need to be
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changed when the trademark registration
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status changes or to add a trademark
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these process changes may take months to
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implement based on tooling refresh dates
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and available resources installation
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instructions included with the part is
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sold to the customer may be acceptable
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proof of use but should always be
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secondary to marking the trademark
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directly on the product or packaging you
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can’t just tell someone in engineering
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to put a trademark on a label and hope
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it turns out correctly a trademark
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should not be paired with textual
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phrases that are not part of the
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registered mark in this example we have
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a label that shows a No Touch technology
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and the product literature that states
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there is a No Touch power spraying
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however the registration was for no
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touch brake actuators you should also
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watch for laziness and implementing the
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trademark such as elimination of hyphens
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when hyphens are required as part of the
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registration using the word only when
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they designed
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mark was registered or abbreviations of
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the trademark that were not part of the
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original registration another item to
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watch for is ensuring the trademark
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registration symbol is next to the
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trademark and not any add-on descriptive
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names such as advanced or next trademark
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lawyers that your affiliate companies
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may not know the rules requiring proof
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of trademark use and commerce in the
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United States in some cases they may
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fail to inform you of their national
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stage filing in the United States until
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a deadline for providing proof of use in
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the United States is looming marketing
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requirements may be different in other
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countries but parts manufactured
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imported or sold into the United States
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need to follow the United States
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trademark marking rules to maintain the
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registration a lot can happen to a
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product in its packaging over the years
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trademark correct use is generally not
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forefront on a product managers mind
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when he or she is making product changes
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I suggest reviewing the entire portfolio
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by business unit every two to three
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years you can also obtain specimens of
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use at that time to ensure correct usage
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and to prevent scrambling to find
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pictures of the trademark parts at the
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last minute in response to a renewal
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request I hope these tips are helpful as
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you put your trademarks to good use
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thank you so much for your time

David Michaels

David Michaels, J.D., B.Eng., CHRM is a trained attorney who holds certificates in Canadian Trademark Law (2012) and Canadian Patent Law (1996) from McGill University. He has worked in the area of trademark law in Canada since 1995 and in the USA since 1993. David is a legal blogger, brand consultant, an eCommerce entrepreneur, and an aeronautical engineer. http://ca.linkedin.com/in/davidtmichaels/ Warning & Disclaimer: The pages, articles and comments on trademarkpro.ca do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the author's notes of the current state of trademark law and should not be attributed as opinions of the author, his employer, clients or the sponsors of trademarkpro.ca. The author does not warrant that these notes are up-to-date. Trademark law is constantly changing and it varies between jurisdictions and even within jurisdictions. This website should not be relied upon.