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 trademark.
          The following is an explanation of the source of these unusable specimens of marks and some guidelines on proper use.

          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 “Noun” rule.
Here are a few familiar examples of proper use and misuse:

  • Kleenex® brand tissue. Kleenex® is the trademark. Tissue is the product. Incorrect: “Give me a Kleenex.” This is incorrect, because Kleenex is being used as the noun/name of the “thing” – that is, a nose tissue. Correct: “Give me a tissue,” or if you want to be specific, “Give me a Kleenex® brand tissue.”
  • Xerox® brand photocopy. Xerox® is the trademark. Photocopy is the product. Incorrect: “Make me a Xerox of that document.” This is incorrect because Xerox is being used as the noun/name of the “thing” – that is, a photocopy of a document. Correct: “Make me a photocopy of that document,” or if you want to be specific, “Make me a Xerox® brand photocopy of that document.”
  •           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:

    • Aspirin, which was originally the trademark created by Bayer for acetyl salicylic acid pain reliever compound. The name has become part of the English language to describe the drug itself.
    • Escalator, which was the name originally coined to describe an electronic staircase to take people from floor to floor, has now become the word used to describe all such mechanical stairs.

              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.

    Examples:

    • Scotch® brand transparent pressure sensitive tape. Scotch® is the mark, and transparent pressure sensitive tape is the parenthetical noun/name of the product;
    • Fast Alert® warning system. “Fast Alert®” is the mark, “warning system” is the parenthetical noun/name of the product.

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