|© Ross Hamilton|
Proper Use and Misuse of Trade and Service Marks - Some Guidelines
Frequently, newcomers to the trademark arena unknowingly misuse their
marks, and bring us specimens in which the mark is incorrectly used
as a noun. While we are happy to help edit the documents for correct
usage of the trademark, this early misuse can result in problems, because
trademarks are given priority based on the date of filing and the date
of first use in commerce. If the specimen showing use of the mark is
deemed improper by the Trademark Examiner, the applicant (you) will
lose the earliest date that the mark was used, and have to begin again
with a corrected specimen showing valid use of the mark. Therefore,
we urge you to consult experienced trademark counsel prior to designing
and printing materials which will impact the registrability of your
Trademarks or service marks are the “names” (brands, logos, services
and slogans) given to products and services. They are not the goods
or services themselves. When using your mark, the trade or service mark
should NOT be used as the name of the product/services. That’s the basic
When trademarks are incorrectly used as a noun for the name of the product
itself, the mark replaces the name of the thing, and ultimately may
become adopted by the public as one name of the thing or service itself.
It then enters the public domain as a new word in the English language.
Examples of lost marks include:
Thus, the mark you select for your product or service must be used as an adjective which refers to the actual goods or services that you provide. It can be a made-up word (like Google®, which describes a search engine) or an actual word (like Staples®, which is the name selected to describe a chain of office supply stores and their privately labeled products). Either way, in brochures, labels, advertisements and other print and electronic materials, the trademark should always be followed by a parenthetical expression of the actual product or services offered by the company who owns the mark.
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