Lesson 10: How to Protect Your Trademark

Once you have selected a trademark, your next task is to protect it. Protecting your trademark involves using the mark, using the trademark symbol, avoiding generic use, monitoring the trademark, taking legal action where appropriate, registering the mark, and renewing the mark.

Use the Mark

The key to trademark protection is use. If you don’t use it, you will lose it. Use is so essential to trademark protection that the general rule is that the first person or entity to use a mark, in commerce and/or in a particular territory, has priority over the person or entity that comes along later—even if the subsequent user registered the mark first. For example, Your Company has used a mark for 10 years, throughout the eastern half of the United States, to distinguish its widgets from those of other widget retailers. Four years ago, Other Company started to use the same mark and immediately registered it with the U.S. Patent and Trademark Office (USPTO). Even though Your Company has not registered the mark with the USPTO, it has priority over Other Company because it has used the mark consistently for a longer period of time and can prove it.

Use the Trademark Symbol

Affix the appropriate symbol next to your trademark. Although not required, it’s a good idea to place the trademark notice symbol next to your trademark or service mark. Once again, this lets the world know that you claim ownership rights in this mark. Here are some guidelines for using trademark symbols:

• Use the TM designation for trademarks or to distinguish an entity selling primarily products and goods, even if it also provides a service. Proper placement is in the upper right hand corner of your word, phrase, logo, or design. For example: Microsoft^TM.

• Use the SM designation for service marks or to distinguish an entity selling primarily a service, even if it also sells goods. For example: EthnoConnect^SM.

• The R inside the circle is only to be used after you have registered your valid trademark with the USPTO. To use it before registration is illegal. For example: Exxon®.

Avoid Generic Use

Don’t allow your mark to become generic. It becomes generic when a term that was once distinctive and protected is improperly used in commerce. Examples of marks that were once protected but have now lost their protection are Thermos for vacuum-sealed bottles, Cellophane for clear wrapping paper, and Aspirin for headache medication. The public started to use thermos for all vacuum-sealed bottles, cellophane to identify all clear wrapping paper, and aspirin as the term for all pain medication. Some companies have invested tens of thousands of dollars to teach the public how to use their marks. Protection begins with how you use your mark. Use it as an adjective, not as a noun, such as Kleenex tissues, not just Kleenex.

Monitor the Trademark

It’s not enough to spend money on creating and registering your mark, you must carefully monitor the marketplace to ensure no one else is using it and make sure people are using it properly. There are companies that provide this service, such as Thomson & Thomson, Legal Zoom, and any number of law firms.