Trade-Marks
5. Tips and Strategies to Maximize your Trade-Mark's Effectiveness
(b) Taking Care of Your Trade-Mark
Once you have selected a trade-mark and established your ownership rights in your trade-mark through registration, there are certain practices you should follow in order to preserve the value of your trade-mark.
(i) Proper Use of the Trade-mark
The key factor in establishing a right to a trade-mark is use of the mark. This use requirement never stops. Even if your trade-mark is registered, you must still use the mark in order to safeguard it from attack by third parties. For further details on the use requirements, please refer the section on Registration of a Trade-mark and beyond, above. It is important when you use your trade-mark that the public recognizes that what you are doing constitutes trade-mark use. By following the simple guidelines below, you can help to ensure that your trade-mark is being used correctly and that the benefits of using the trade-mark will flow to your business.
(a) A trade-mark should be used in a manner to distinguish it from descriptive or generic words. This can be done, for example, by the use of distinctive typeface, or by capitalization of all of the letters of the mark. At least the first letters of each word of the mark should be capitalized in each occurrence.
e.g. ACME™
(b) A trade-mark should be used only in an adjectival sense, i.e. it should not be used as a noun or a verb.
e.g. BAND-AID ™ bandages
If you allow your mark to be used as a noun, you risk having your trade-mark become a generic term and the trade-mark significance will be lost. This was the fate of ZIPPER (a slide fastener) and ESCALATOR (a moving staircase).
(c) Avoid the use of epithets such as "original" or "genuine" in association with the trade-mark, as this implies there may be other products produced by third parties bearing the same trade-mark.
(d) All variations of the trade-mark should be avoided. Never use the trade-mark in the plural form, or as a possessive, or as a descriptive adjective to modify any words other than the generic name of the product. Avoid abbreviating a trade-mark or compounding it with another term or using it to coin another word or phrase.
(ii) Source Identification - House Marks
If possible, you should use the trade-mark for a diverse range of products. This directs both consumers and the trade, toward recognition of the word as a source-indicative house mark, rather than as the generic name for any particular product.
(iii) Trade-mark Notices
A proper trade-mark notice should be used with each trade-mark at least once, preferably the first time the trade-mark appears, on all labels, nameplates, hang-tags and packaging, and in all advertisements, promotional material, publications and other literature distributed by the trade-mark owner or his licensees.
(a) The ® symbol, indicating the trade-mark has been registered, is recommended for registered trade-marks;
(b) The letters ™ should be used after trade-marks which have not been granted registration.
(c) Alternatively, the trade-mark may be followed by an asterisk (*), with a footnote indicating that it is a registered or an unregistered trade-mark, as the case may be.
(iv) Police your Trade-mark
(a) Be certain that all employees, agents, dealers and distributors follow the above rules of proper trade-mark usage, and educate the public through advertising or other media to use the word as a trade-mark. Additionally, any improper use of the trade-mark by others, such as where it is used generically in dictionaries, fiction, newspaper articles, scientific magazines etc., should be protested in writing, and wherever possible, require written retractions to be published.
(b) Be vigilant in protesting against all unauthorized uses of your trade-mark, and be prepared to promptly initiate legal proceedings if the unauthorized user will not volunteer to discontinue its use of your trade-mark.
(v) Licensing of your Trade-mark
If you intend to license one or more other parties to use your trade-mark, then it is critical that you have a written license agreement in place, which strictly controls the use your licensee can make of the trade-mark. It is also advisable that where products or services are provided by your licensee under license, that public notice of the name of the trade-mark owner and of a licensee's capacity as such be given. Some examples of acceptable notices are:
ACME is a registered trade-mark of Coyote Inc.
Road Runner Ltd. is a licensed user.
ACME is a registered trade-mark of Coyote Inc.
Made in Canada under licence by Road Runner Ltd.
*denotes registered trade-marks of Coyote Inc.
Used under licence by Road Runner Ltd.
ACME Reg. T.M of Coyote Inc.
Road Runner Ltd., auth. user.