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”?