adcounselor@justice.com

Use it or lose it. A pretty ubiquitous phrase. One that certainly applies to trademarks and service marks. Use them and you’ve got them for good, don’t use them and they are there for the taking.

The questions that I generally get asked are: (1) how do we insure that we are using our trademarks properly? and, (2) can we use another company’s trademark in our advertising and marketing material?

Both questions can be answered easily. Follow a rather simple set of rules and most problems can be avoided. With respect to a company’s own Marks (for purposes of this article, I will lump trademarks and service marks together, referring to them as “Marks”) the rules govern what you do and what others do. Here are the you do rules:

• Always an adjective

To avoid the danger of having the Mark become generic (“escalator” used to be a trademark), always use the Mark as you would any other adjective. Don’t pluralize a Mark, don’t use a Mark in the possessive form, don’t use it as a verb and always follow it with a generic noun.

• ALWAYS USE THE PROPER NOTICE

The proper notice depends on whether the Mark is registered. If it is, the proper notice is ®. If not, the notice is the ™ or (SM) placed on the shoulder or heel of the Mark. You can also use an asterisk on the shoulder of the Mark with the footnote, “Trademark of XYZ Company.” In advertising, the notice should be used in the first, most prominent use of the Mark in the ad. It does not have to be repeated thereafter. In packaging and labeling, the notice should always appear alongside the Mark. For brochures, catalogs, flyers and other collateral pieces, the notice requirements are the same as for advertising.

• ALWAYS SET THE MARK APART

Wherever possible set the Mark apart from other words or phrases in an ad by capitalizing the Mark or using italics, a different font or a different color.

• NEVER ALTER THE MARK

Always keep the Mark in the form it was registered or denoted with notice. Don’t abbreviate the Mark, don’t change its spelling, don’t hyphenate or make up new words from the Mark, and always use consistent colors for graphic marks.

• WATCH THE MARK

The point here is to watch the Mark to insure that others do not infringe on it. If they do, it is very important to protect the Mark. Not protecting it can diminish its value or result in outright loss. Possible infringers should be put on notice immediately, and in extreme cases, court protection in the form of injunctions should be sought. This does not mean that other companies cannot use your marks, as the next section describes, but it must be done properly, and if not, must be stopped.

Now, as to the use of other company’s trademarks… Under the right circumstances, they can be used. However, as with a company’s own Marks, there are certain rules. They are:

• USE THE MARK EXACTLY AS THE COM- PETITOR DOES

Make sure to use the mark in exactly the same way the competitor does, including the notice and colors. There are a number of states that have dilution laws that could be triggered by failing to use the mark properly.

• DO NOT IMPLY AN ENDORSEMENT

Remember the competitor’s Mark identifies his goods or service and you cannot use it as an en dorsement of your product or services. Ads and marketing pieces must be screened very carefully to insure that there is not an actual or implied endorsement. Comparative advertising does not normally require permission, but in other instances getting permission would be a wise idea.

Just don’t let this happen to you –

A clever entrepreneur named Derrick

Created a trademark quite esoteric

But the silly young fool

Ignored each trademark rule