Lex Indicium

A trademark’s value can be lost or weakened when a trademark owner fails to protect or police rights in the marketplace. Even improper and/or inconsistent use of a mark can hamper a trademark owner’s ability to enforce exclusive rights in a selected brand. Even if you own a federal trademark registration, the exclusive rights you own are not “self-executing,” and as the trademark owner, you are ultimately responsible for policing the marketplace, and sometimes your own use, to safeguard against losing rights.

Here are some of the top tools every trademark owner should consider incorporating into its trademark enforcement strategy:

1. Include Proper Notices Of Ownership and Registration of Trademarks. If your mark is not registered, but you have a good faith belief that you own a mark exclusively, you should use “TM” with your mark. This symbol tells the world that you believe yourself to be the rightful mark owner.

Once registered, you should use one of the following forms of notice in connection with each use of the registered trademark, which relates to the types of goods or services described in the Certificate of Registration: ®, Reg. U.S. Pat. & Tm. Off., or Registered in U.S. Patent and Trademark Office. It is usually sufficient if the trademark notice appears with one prominent use of the mark in any single advertisement or label, although the mark itself may appear several times. You should bear in mind that these “registered” notices should not be used with unregistered trademarks, nor with the trademark when used in connection with goods or services other than those described in the Certificate of Registration. If the trademark is used with additional types of goods or services, you should consider registering the mark with respect to the additional types of goods or services.

2. Use Your Trademark As A Trademark. A trademark should be used as an adjective and not a noun or verb. Using a mark as a noun or verb suggests that the term is not unique but generic or common. To protect the value of the mark, try always using it as an adjective in front of whatever the generic noun is. “Microsoft® software,” “Fiji® water.” Use of the word “brand” after the mark also helps ensure that the mark does not become generic, e.g., “Scotch® brand tape.”

In addition, trademarks should not be used in the plural or the possessive. For example, one should refer to “Reebok® athletic shoes,” not “Reeboks,” and “Xerox® photocopies,” not “Xeroxes.”

Referring to your mark as a noun increases the possibility that the mark itself will become “generic” and therefore lose its protectability. This fate has already knocked out some famous brands from our past, including “Aspirin,” “Escalator,” and “Cellophane,” all of which were once valuable brands and now have become merely generic descriptors of products.

3. Use A Watch Service To Monitor Infringing Uses Of Your Trademark. To adequately protect marks, particularly house marks and tradenames, trademark owners should consider instituting “watch services.” These services, whose charges range from a few hundred to thousands of dollars per year, depending on comprehensiveness and geographic scope, will automatically track trademark filings, online use, domain name, and social media usage of marks and alert you to potential conflicts. The more sophisticated (and more expensive) watch services also may be used to track the trademark activities of competitors. They can even be used to fire off initial demand letters and communications to bad actors.

4. Secure Any Desired Domain Names and Social Media Handles That Incorporate Your Trademark Sooner Rather Than Later. Most domain names and social media handles are available to the public on a first-come, first-served basis. As a result, brand owners should consider registering value marks as domain names and social media platforms as soon as a new valued mark is identified. Suppose you find that your selected mark is already registered as a domain name or by social media. In that case, there are various mechanisms for obtaining a transfer of rights or challenging infringing use. Still, it is far easier to obtain rights in advance rather than have to chase them after a third party has registered your mark as a domain name or otherwise. Rightsholders should consult legal counsel to determine the best strategy for acquiring and challenging third party registration of domains and handles that incorporate valued trademarks.