The effective use of trademarks is a critical component of any business. Trademarks embody the goodwill and reputation that a company builds up in the marketplace, and play a significant role in influencing consumer decisions.
What is a trademark? A trademark is a word, symbol, or combination of words and symbols that is used to identify the source of the goods or services. A consumer of a product need not know the name of the source, as long as he or she knows that the trademark indicates that all products come from a single source. This gives a consumer an assurance of quality when making future purchasing decisions. For example, a consumer who sees the trademark Pepsi® on a can of soda in Michigan knows that it is of the same quality as a can of Pepsi® purchased in Florida. Thus, a trademark is the symbol of the “good will,” or reputation that is developed by the owner of the mark.
Is there a difference between a trademark and a service mark? Not really. Trademarks are used in connection with goods (such as a bottle of vitamins or lipstick), and service marks are used in connection with services (such as long distance or advertising). The legal protections afforded to trademarks and service marks are the same, however, and both trademarks and service marks are commonly referred to as “trademarks” or, more simply, as “marks.”
How can trademarks be used most effectively? In order to allow consumers to quickly and easily recognize a trademark, the presentation of the trademark should be consistent each time it is displayed. Further, a trademark should be used in a way that distinguishes it from surrounding text. The mark should stand out to consumers and should not simply be an indistinguishable part of a larger context. Whether this has been done successfully depends upon the “overall commercial impression” of the trademark in its particular setting. A trademark can be distinguished in many ways, such as by physically placing the trademark apart from surrounding text or by distinguishing the trademark’s appearance by using a different size, typeface, capitalization, or color than the surrounding text.
A trademark should be followed by a notice that it is being used as a trademark whenever possible. Although not required by law, such a notice serves a useful function by placing the world on notice of the trademark owner’s claim of exclusive right to use the mark. Such a notice is also necessary before the trademark owner can collect any money damages for infringement of the mark (although even without such notice the trademark owner can still seek injunctive relief, that is, a court order prohibiting another party from using the mark).
At a minimum, a notice should be used the first time the mark is used as a trademark on advertising, product packaging or other documents. Before registration in the United States Patent and Trademark Office, the notice should be™ for a trademark or SM for a service mark, or the mark can be followed by an asterisk that refers to a footnote which indicates the owner’s claim of rights in the mark, e.g., ” * XYZ is a trademark of ABC Corporation.” Once the trademark is registered, but not before, the products, labels or advertising materials containing the mark may carry the registration symbol ®, or the legend “Registered in the U.S. Patent and Trademark Office,” “Reg. U.S. Pat. & T/M Off.” (both of which normally appear as footnotes.)
In closing, note that a company name, alone, is not a trademark subject to the above protections. The company name, only if used as an identifier with a product or service, becomes a trademark. “Campbell’s” (alone) is not a trademark and cannot be registered by itself. “Campbell’s” brand of “soup” can be, and of course, is registered. When you discuss registering as a trademark a word or phrase with an Attorney, the company name is not enough information. He or she will always ask – What is the “soup”?
Gerald P. Nehra is a private practice Attorney at Law. He is one of only a few attorneys nationwide whose practice is devoted exclusively to direct selling and multilevel marketing legal issues. He began his legal career in 1970, and from 1982 to 1991 he was the Director of the Amway Corporation Legal Division. He can be reached at Nehra & Waak, Attorneys at Law, 1710 Beach Street, Muskegon, Michigan 49441, 231-755-3800. His e-mail address is GNehra@mlmatty.com. You are invited to visit his web site at www.mlmatty.com. Permission to reproduce, with this attribution included, is granted.
Trademark Owner Abuses
Gerald P. Nehra
The seriousness of this topic became very apparent to me when I recently received in the mail the “Certificate Suitable for Framing” (my words) of a newly registered trademark I had applied for on behalf of a client. This event happens often, and my routine is simply to immediately email the client that it has arrived, made a copy for my files, put the follow up dates in my database, and mail the original to the client. But something was different. for the first time, in the government envelope, printed on very bright orange paper, was a warning: WARNING FROM THE USPTO CONCERNING UNOFFICIAL TRADEMARK SOLICITATIONS.
At least a dozen times in the past year I have received calls, faxes, or e-mails from clients asking about documents described below, and I advise them to toss or delete, and to NOT send any money. The rest of this article consists of the Warning – unedited – as it is now being sent with new Trademark Certificates, directly from the United States Patent and Trademark Office.
Please be aware that private companies not associated with the United States Patent and Trademark Office (USPTO) often use trademark application and registration information from the USPTO’s databases to mail or e-mail trademark-related solicitations. These may include offers: (1) for legal services; (2) for trademark monitoring services; (3) to record trademarks with U.S. Customs and Border Protection; and (4) to “register” trademarks in the company’s own private registry.
These companies may use names that resemble the USPTO name, including, for example, the term “United States” or “U.S.” Increasingly, some of the more unscrupulous companies attempt to make their solicitations mimic the look of official government documents rather than the look of a typical commercial or legal solicitation by emphasizing official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records. Many refer to other government agencies and sections of the U.S. Code. Most require “fees” to be paid.
Some applicants and registrants have reported paying fees to these private companies, mistakenly thinking that they were paying required fees to the USPTO. So, be sure to read trademark-related communications carefully before making a decision about whether to respond. All official correspondence will be from the “United States Patent and Trademark Office” in Alexandria, VA, and if by e-mail, specifically from the domain “@uspto.gov.”
If you receive a trademark-related solicitation that you believe is deceptive, you may file an online consumer complaint with the Federal Trade Commission (“FTC”), at www.FTC.gov. Although the FTC does not resolve individual consumer complaints, it may institute, as the nation’s consumer protection agency, investigations and prosecutions based on widespread complaints about particular companies or business practices.
The USPTO encourages recipients of misleading communications to contact the USPTO about them by emailing TMFeedback@uspto.gov. When notifying the USPTO about a misleading communication, please also:
1. Include a copy of the misleading communication (including the envelope it came in) if available;
2. Indicate whether the recipient thought the communication was an official U.S. government communication or had to ask an attorney or the USPTO whether it was legitimate;
3. Indicate whether fees were mistakenly paid in response to the communication and, if so, provide a copy of the cancelled check. Please also specify what services, if any, were provided in exchange for the payment made.