Q.  What are some practical ways to protect my trademark while I continue to build a successful business around my mark?

A.  Here is a list of practical things you can do to protect your mark.

1. Register your Mark.

If you have not done so already, register your mark.  Federal registration triggers certain substantive and procedural rights.  For example, a registration on the Principal Register is prima facie evidence of (i) the validity of the registered mark; (ii) the registration of the mark; (iii) the registrant's ownership of the mark; (iv) the registrant's exclusive right to use the registered mark; (v) use of the mark in interstate commerce prior to registration (for use-based applications); and (vi) continued use of the mark since the filing date of the application. 

Federal registration also confers constructive nationwide notice of the trademark owner's claim (so as to rebut any defense of good faith adoption and use made after the date of registration).  It also permits federal Jurisdiction in lawsuits concerning the mark, and may serve as a basis for obtaining a trademark registration in foreign countries.  A federal trademark registration may also be filed with the U.S. Customs Service to prevent importation of infringing foreign goods bearing an infringing mark.  Importantly, after 5 years a Principal Register registration may become “incontestable” as conclusive evidence of the registrant's exclusive right to use of the mark, subject to certain statutory defenses.   Incontestable marks can only be cancelled on certain limited grounds, not including descriptiveness or prior use.

A federal registration may grant the registrant a “constructive first use date,” nationwide in effect, as of the filing date of the application.  This is useful where a trademark proprietor has not actually begun using the mark.  Otherwise, the party that is the first-to-use the mark, not the first-to-register, will have priority in terms of trademark rights. 

Trademarks can also be registered under state law.  However, if federal registration can be secured, there is usually no advantage to seeking state registration.  But state registration is worth considering if the trademark proprietor is making purely intrastate use of the mark.

2. Enforce your Mark. 

In addition to proper use, trademark enforcement is necessary to help protect the ability of the mark to identify and distinguish the source of a product or service to consumers.  This can include constant vigilance of trade publications, trade shows and the marketplace, or the use of third party watch notices.  However, before contacting a potentially infringing party it is highly recommended that you first consult with a trademark attorney to ascertain the scope of your rights and the appropriate enforcement strategy. 

3. Continuously use your Mark. 

Do not let your mark become abandoned.   Continuously use your mark in its registered form with the goods or services listed in your registration.

4. Prevent Brand Genericide - Accompany your mark with a generic term. 

Do not let your mark become the common or generic term for your product. Remember, generic terms cannot function as a trademark.  Example:  “KLEENEX brand tissues.”

5. Use Proper Grammar. 

A mark should be used as an adjective, not a noun or a verb.  The mark (adjective) modifies the generic term (noun).    A mark should not be used in the possessive or in the plural. 

YES:  “Xerox copiers.”  NO:  “Are you going to Xerox that” or  “Where’s my Xerox?”

6. Set the Mark Apart. 
Marks should be set off from the surrounding text.   Examples: (i) Large type – all caps or initial caps; (ii) Use of quotation marks; (iii) Use of different colors; (iv) Distinctive lettering, (v) Different font or stylization; (vi) Use the word “brand” following the mark. 

7. Use Proper TM and Registration Notices. 
Provide notice of your trademark rights.  If the mark is not registered, use the “TM” or “SM” symbol.  Example:   CRANAPPLE ™ cranberry raisin drink.  Or use an asterix next to the mark, followed by a credit line at the bottom of the text. 

Example:  CRANAPPLE*
(*) CRANAPPLE is a trademark of Ocean Spray Cranberries, Inc.

If the mark is registered, the following statutory notices can be used.

• The letter R enclosed in a circle:   ®
• Reg. U.S. Pat. & Tm. Off.
• Registered in U.S. Patent and Trademark Office

Or use an asterix next to the mark, followed by a credit line at the bottom of the text. 
Example:  CRANAPPLE*
(*) CRANAPPLE is a registered trademark of Ocean Spray Cranberries, Inc.

8. Use Claims of Exclusivity.  

Reinforce a term’s trademark status through explicit claims of exclusive use.
Examples:

• Only from _________.
• Exclusively from _________.
• Made only by _________.
• Look for (TRADEMARK), your assurance of (Trademark Owner’s) quality. 

Last updated January 17, 2011.

Allen M. Lee  Mr. Lee’s practice focuses on business, corporate and intellectual property matters, including the creation, protection and exploitation of intellectual property assets.  He counsels clients on business formation, general corporate matters, trademark, copyright, trade secret, patent, licensing, internet and domain name issues, among other things.  For more information contact: Allen M. Lee, a Professional Law Corporation, Tel: (650) 254-0758, Fax: (650) 967-1851, Email: allen@allenmlee.com, Internet: www.allenmlee.com.