Tips for Proper Trademark Usage

The danger in the successful adoption and use of a trademark is that the mark might become generic. Once a mark becomes generic, or in other words is widely accepted as a term for the description of the type of goods or services with which it is used rather than with the goods or services of a particular person, anyone can use it. This is because the mark no longer indicates
to the general public or consumers of the products or services in question that the goods or services were made by the trademark owner. A trademark represents not only a substantial investment of resources by a trademark owner but also an asset which, in the case of a successfully developed mark or market might have significant good will or value attached to it. For the consumer, a trademark provides a method of differentiating the products or services of various producers and allows them to easily identify their preferred brand choices. Remember these tips to avoid non-distinctive use of the trademarks of yourself or others.

Trademarks Are Not Verbs

It is dangerous to use your trademark as a verb, since you risk the problem of your trademark becoming generically descriptive of the activity to which it is used to refer.

Do Not Pluralize A Trademark

Since trademarks are adjectives which describe nouns, rather than being nouns themselves, they should not be used in plural form. Rather than pluralizing the trademark, the nouns which they describe should be pluralized.

In the case of trademarks which end in an "S", however, the treatment should be no different. The mark should not be adapted to imply the singular tense by removing the "s". For example:

Trademarks and Trade Names Are Not the Same

Trademarks are different from trade names, corporate names or business names. Trade names are proper nouns which can be used in the form of a possessive and do not require a generic modifier. Trade names should not be marked with a trademark symbol. Many companies use their trade names as trademarks. For example:

Corporate name: "These shirts are made by Tommy Hilfiger Ltd."

Trade name: "These shirts are made by Tommy Hilfiger."

Trade name: "Tommy Hilfiger's newest line of jeans is for women."

Trademark: "Are those TOMMY HILFIGER jeans, or are they LEVI'S?"

Trademarks Should Not Be Used in a Possessive Form

Trademarks should never be used in a possessive way, such as by adding " 's ", unless the trademark itself is a possessive mark, such as "WENDY'S restaurants" "LEVI'S jeans", or "PEAR'S shampoo". Trade names, unlike trade marks, can be used in a possessive sense.

Avoid Generic Use - Trademarks are Proper Adjectives

Properly displaying your trademarks will distinguish your mark from the generic language with which they are used. For example, trademarks should either be used with Initial Caps, used with "Initial Caps" with quotes, or optimally CAPITALIZED COMPLETELY. Generic terms should always appear after the trademark - e.g. "LITTLE CAESAR'S pizza" 

At the very least the generic term should be used after the trademark at least once in each written communication and where possible or appropriate also in all broadcast matter. Preferably this should be the first time the mark appears. Some examples of this are:

FORD car;
"Kleenex" tissues;
DELL computer;
Kodak film;
SUBWAY restaurant.

Additional emphasis can be placed on trademarks by using the word "brand" after the mark - example, "SCOTCH Brand transparent tape". Proper marking, discussed below, should also be considered. 

Show People That Your Mark is Important to You

Additional emphasis can be placed on trademarks by using one of the universally acceptable symbols or methods of indicating trademark status. Some companies make the proper marking of their trademark status a requirement for each trademark on each piece of advertising material, packaging or other communication using their marks. Some of the marking methods are as follows:

® or Reg. Canadian Intel. Prop. Office if the mark is registered in the Canadian Intellectual Property Office.

™ for marks that are not registered.

An asterisk (*) and footnote that the mark is either "Reg. Canadian Intel. Prop. Office" if the mark is registered in the Canadian Intellectual Property Office, or if the mark is unregistered, "A trademark of X Company."

Although trademarks can be protected without registration, most trademark owners choose to register their trademarks, either in the Canadian Intellectual Property Office or in the trademarks offices of market countries around the world, both to provide notice of ownership to the general public as well as to strengthen their legal ownership and enforcement positions. Furman & Kallio are able to assist you in the registration of your trademarks in Canada and around the world.

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