Wednesday, August 11, 2010

Trademarks and the Entrepreneur

Students and entrepreneurs usually have questions on trademarks, IP, etc. as it relates to their start-up venture. Because this area is a place where a specialist is required, I always refer those questions to an attorney. However, two days ago one of my favorite blogs had a great piece on the proper use of trademarks, so I thought it would made sense to mention it here. IP Law for Startups by Jill Hubbard Bowman is a great blog post for entrepreneurs to read…here is the post on trademarks Protect Your Brand: The Proper Use of Trademarks:

I know that proper use of trademarks and service marks gets confusing for many entrepreneurs. The following is a simple and handy guide on the proper use of the marks in your business. It’s important to review your website and marketing material and make sure that you are preserving potential legal protection for your marks.
Trademarks and service marks are essentially brand names. A mark identifies and distinguishes products or services of one company from the products or services of others.
Trademarks identify goods. Service marks identify services. In contrast, a trade name is a name that identifies a business.
Confusingly, sometimes the same name may be a trade name, a trademark and a service mark. GOOGLE is a trade name, a registered trademark for mugs, bags and t-shirts, and a registered service mark for search engine services.
A critical issue is that improper use of a mark may cause the loss of legal protection.
A federal registration may be denied because the owner used the mark in a generic way to describe its goods or services. Moreover, a court or the PTO may determine that even a registered mark has become generic and therefore free for all to use. Once upon a time, aspirin, escalator, and cellophane were all trademarks. Eventually, the names began to represent the goods rather than the source of the goods and trademark protection was lost.
Improper descriptive use by the trademark owner in advertising or other materials is a factor in deciding whether the name will get legal protection. Widespread use of the mark as the common name for similar goods or services may ultimately allow free use of the mark, even by competitors.
A key issue is whether the public understands whether the name is a common name or a brand name.
If the public thinks the name is the common name—like aspirin—then the law will not protect the mark from competitive use. But if the public thinks the name is a brand name, trademark status may be preserved.
Proper Use of a Trademark or Service Mark
1. Use the mark with a generic term
To preserve legal protection for a brand name, the mark should be used in conjunction with a generic term, like using the mark
Kleenex with tissue. Kimberly-Clark Worldwide, Inc. is very careful to write: Kleenex tissue or Kleenex brand tissue. If you use the common name in conjunction with your brand name it is far less likely that your brand will become the common name. Your brand will be seen as separate and distinct from the common name.
Remember, generic or descriptive names do not have trademark protection upon initial use. Generic names may never be a trademark. Descriptive names may only receive trademark protection after they become famous for identifying the goods as coming from a single source.
2. Use the mark as an Adjective NOT a noun or verb
Use the mark to modify the generic term for the goods instead of describing the goods. This point is similar to the previous one. An example is Google search services. Google needs to be careful that google doesn’t cross the line into becoming the common noun and verb for using any search engine.
Also, don’t use the mark as a possessive or plural.
3. Make the mark look distinctive
To preserve protection, it is good practice to make the mark look distinctive.
Good ways to distinguish a mark include:
Capitalizing the mark;
using color; or
using stylized lettering or a special font.
4. Use the TM or SM symbols
When you initially claim use of a mark as a brand name, after the mark you can use the TM symbol for goods and SM for services. You don’t need to wait until you have filed a registration.
After receiving a federal registration, you can use the ® symbol.
With a little bit of care, you can preserve the value of your trademarks and service marks.
For related posts on Trademark Law:
How to Avoid Trademark Infringement When Selecting Business or Product Names
Consider Whether You Can or Want to File a Federal Trademark Registration

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