The proper use of your trade-mark is critical to its defensibility and maintenance on the register. If it is not used properly, a third party is able to challenge it and strike it from the register (See my previous post on Section 45 Proceedings). This can be detrimental to your business if there is a large amount of accumulated good will associated with your trade-mark. Here are a few tips to be aware of:
TIP #1 – Notice of Ownership
There is no requirement under Canadian or U.S. law requiring notice of ownership of a trade-mark. However, I strongly recommend that all packaging, advertising, or other printed matter including you website that refers to your wares or services clearly identifies the owner and, if applicable, the licensee, of the trade-mark.
For example, an asterisk or other footnote symbol is placed beside a trade-mark, and at the matching asterisk or symbol provide the footnote:
* trade-mark of ABC Corp.
Where the trade-mark use is under a license, say from XYZ Corp. to ABC Corp., the recommended footnote is:
* trade-mark of ABC Corp., used under license. (No need for XYZ Corp.)
Tip #2 – Using the Symbols TM and ®
On at least the most prominent use of a trade-mark on packaging, or on every page of advertising and printed matter, including every page on your website, your trade-mark should be followed by the symbol TM for an unregistered trade-mark (or one which is pending) or the symbol ® for registered trade-marks. In the United States using the ® symbol against a trade-mark that is not registered is considered fraud. There is no similar narrow interpretation of the symbol ® in Canada and that symbol can be used whether or not the trade-mark is registered. Therefore, the symbol ® should only be used when there is certainty that the trade-mark has been registered in the United States.
Tip #3 – Consistency in Appearance
A trade-mark should always appear on packaging, advertising and other published materials in a prominent manner, such as a distinctive and consistently-used font. The message to the public is that the trade-mark is not merely a word within a block of text or a word on the packaging, but a distinctive feature – a trade-mark. Generally, trade-marks are identified in capital letters or italics. For example:
BLAHBLAH® telephone receivers
Tip #4 – Trade-marks are Adjectives
A trade-mark is an adjective, not a noun. For example:
USE “When using BLAHBLAH® receivers, unplug the device first.”
DO NOT USE “When using the BLAHBLAH®, unplug the device first.”
Improper usage as a noun can lead to the disassociation of your mark with the wares and services, entering the term into common parlance (think of Google or Kleenex).
Tip #5 – Do not use derivatives of the trade-mark
Do not deviate from the form and appearance of a trade-mark as registered. Do not hyphenate, truncate, or use other grammatical forms of the trade-mark. For example:
DO NOT USE BB
DO NOT USE BLAH-BLAH
USE BLAHBLAH® Documentation
DO NOT USE BLAHBLAH’s Documentation
USE Networking BLAHBLAH® units
DO NOT USE Networking BLAHBLAHs
I would be happy to discuss the usage and display of your mark further. Should you have questions, please contact me.