Use It (Correctly) or Lose It: Best Practices For Proper Trademark Usage

A trademark protects words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and indicates the source of the goods and services. 15 U.S.C. § 1127.

Trademark rights are based upon use of the mark. Accordingly, proper use of a trademark is critical to obtaining registration and for maintenance of the mark, as well as in weighing enforcement of trademark rights against an infringer.

Below we present some general guidelines on proper trademark usage.

1. Provide Notice

For a trademark or service mark registered with the United States Patent and Trademark Office, use the ® symbol in connection with the trademark, which signifies a federally-registered mark. Use of the ® symbol is not permitted with non-federally-registered marks. Failure to provide notice of a registered mark can be considered misuse and could result in abandonment of the trademark, as well as a possible reduction in the amount of damages for infringement.

For non-federally-registered marks, use “TM” in connection with goods and “SM” in connection with services where common law trademark protection is claimed. Although not required, the use of “TM” and “SM” supports correct trademark usage as a source identifier.

The above notations are generally placed above the right end of the mark. If the mark is used repeatedly within a document, providing notice within the title and with the first use in the body is sufficient.

However, when using a mark as a reference to a corporate entity instead of as a brand, use of a notice symbol is unnecessary.

2. Distinguish the Mark

Along with providing notice, for trademarks that include words, consider offsetting the mark by using typography different than the surrounding text. For example, capitalize, underline, boldface, italicize, or use a different size of font for the mark to create a distinction in the mind of the public between the mark and the goods or services that are provided by your business.

3. Always Use the Mark as an Adjective

Be sure to only use the trademark as an adjective, never as a noun or verb, when in combination with the general term for the product or service offered, and never use the mark in place of the general term. For example, “use a Kleenex® facial tissue for a runny nose” is proper, while “use a Kleenex for a runny nose” would be improper.

4. Affix the Mark

A trademark must be “affixed” to a good or used in connection with a service to function as a source identifier. A trademark can be affixed by placing the mark directly on the good, on a tag or label attached to the good, or on packaging containing the good, while a trademark for a service can be affixed by using the mark in connection with advertising or other promotional materials, or placed on letterhead or invoices.

Do not affix a service mark to goods, or a trademark to services.