Sep 14 | 2018

Power-Up Your Mark: Depiction, Marking and Consistency

  • Given competing demands, consumers must immediately recognize and perceive a trademark.
  • Selecting and clearing a trademark are crucial, but neither guarantees consumer recognition nor perception.
  • Standards for depicting, marking and using a trademark are therefore important.

The strength of a trademark hinges upon consumer recognition and perception.  This is true, since definitionally, a trademark does three things simultaneously: 1) identifies, 2) distinguishes, and 3) indicates a specific source in the minds of consumers.

So, after selecting and adopting a trademark, full attention should be paid to capturing and maintaining rights in it.  This is challenging, especially when goods and services are marketed through various and ever-expanding forms of media.  Nonetheless, proper depiction and marking are two ways to accomplish this.  Along with depiction and marking, consistent usage represents an additional best practice.

Depiction

Depict your trademark so as to separate it from any nearby or surrounding text. Ideally, your trademark should appear capitalized, underlined, italicized, in bold and/or in quotation marks.  Other means of setting a trademark apart from nearby matter include sizing, fancy fonts and color.

Moreover, for the most robust protection, display the trademark as an adjective along the lines of “XYZ handbag,” “XYZ design services” and “XYZ search engine,” instead of as a noun (“XYZ is great”) or verb (“Let’s XYZ it and see what happens.”).  Also, avoid using the trademark possessively or plurally.

Marking

In the U.S., it is improper to use the federal registration symbol “®” alongside any trademark that is not actively registered with the United States Patent and Trademark Office (USPTO).  Therefore, care should be taken to track and maintain the registration and common law status of all trademarks within the portfolio.

Conversely, the “TM” symbol – for goods as well as the “SM” symbol for services – can be used at any time and appears alongside trademarks that have not been registered with the USPTO.   Notably, “TM” is the broadest of the two symbols and stands for “trademark” (which technically covers good and services) while “SM” is shorthand for “service mark.”

As symbols, “TM” and “SM” simply notice others as to the user’s claim of ownership or whatever rights the user believes it possesses in the accompanying word, phrase, etc.  While not determinative of any actual rights, these symbols can still deter others from using a confusingly similar trademark and possibly convince others that the user is serious about enforcing the common law rights attained through use of the same.

Consistency

Generally speaking, the notice symbols – ®, TM, and SM – need not be used each time a trademark appears.  Indeed, repeated uses of these symbols can distract consumers.  So, consider using the appropriate symbol where the trademark is displayed most prominently or when the mark is first used in any packaging, text or copy.

For lengthy documents, consider using the appropriate symbol as often as needed to ensure that readers believe they are encountering a trademark.  Alternatively, the user can include a statement at the beginning or end of any document summarizing the trademark’s status and ownership (e.g., “XYZ is a federally registered trademark of ABC”).

Next, be sure to spell and use the trademark the same way across all platforms and avoid shortening, abbreviating, or simultaneously joining it with other elements in any consumer-facing text.

Trademark protection is an on-going process. Selecting and adopting a trademark represent the beginning of the process.  A trademark should be properly depicted, marked and used; doing so will strengthen the trademark and makes it more feasible to enforce.

By Brian D. Brown, Esq.

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