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What to do now that your Trademark is Pending

Now that an application for the registration of your trademark has been filed with the United States Patent and Trademark Office (the USPTO), you need to preserve your rights in the mark. Below are some guidelines you should follow with regards to the ongoing use of your trademarks.

Give Notice of Your Trademark Rights

Providing public notice of your trademark rights is important, for registered and unregistered marks. The failure to display proper notice is a common mistake, yet very easy to correct and avoid. The appropriate form of notice depends on whether the mark is registered with the USPTO or not and for what the mark is used.

Pre-Registration Notices

Whenever you use a mark in conjunction with your goods or services, if you intend to use it as a trade name (i.e., trademark or service mark), you should use the symbol TM for goods and SM for services. These symbols should be used in proximity to the mark, and typically on the lower or upper right of the mark.

Registration Notices

When a mark is registered with the USPTO, there are three ways you may give notice, these include the following options: (a) “®;” (b) “Registered, U.S. Patent and Trademark Office,” or (c) “Reg. U.S. Pat. & Tm. Off.”

Failure to use one of these notices each time a federally registered mark is used, may hinder the prosecution of a trademark infringement action by allowing the wrongdoer to claim “innocent infringement” as a defense. If proper notice is not used, and displayed prominently, the infringer may claim ignorance of trademark rights, and damages available to the trademark owner may be reduced. In other countries, permissible notice forms differ from those used in the above-examples. Consult qualified trademark counsel for the form appropriate for specific countries prior to preparing labels, advertisements, packaging, or displays with the trademark.

Use Your Mark as an Adjective

Marks are adjectives and should be used only as such. Marks never should be used as nouns or verbs. Nor should marks be pluralized, or used in the possessive form. Non-adjectival uses of marks, over time, can result in rendering the mark generic or a finding of unintentional abandonment — even when such use emanates from the public rather than a trademark owner. For this reason, the owners of marks such as Coke®, Kleenex®, Xerox®, and FedEx®, expend considerable efforts to educate the public concerning the proper use of marks.

One way to ensure that a mark is used in proper adjectival context is to follow each use with the generic noun for the product identified. For example, generic terms for the trademarked products and services mentioned in the preceding paragraph, are “soft drink,” “facial tissue,” “photocopier,” and “overnight courier service.” Using these terms after the marks, makes them adjectives, rather than nouns. Using the word, “brand,” after a mark, and before the generic product name, further guards against non-adjectival use.

Use Your Mark Distinctively

Marks should be used in ways that distinguish them from surrounding text. The use of trademark notices, generic terms, and “brand,” in connection with marks, helps differentiate marks from generic terms. However, marks also should be CAPITALIZED, underlined, italicized, placed in “quotation marks,” or depicted in boldface type, whenever they appear in printed or electronic media. The goal is not just to avoid using the mark generically, but to create a distinct commercial impression in the minds of consumers regarding a mark, and the products, services, and business it represents.

Combining a logo with a word mark, can enhance, or create, a distinctive commercial impression, and sometimes can distinguish two similar word marks from one another. In some cases, where a relatively descriptive word mark is selected, registration may be obtained by joining a distinctive logo with the common or partially-descriptive term. Such registrations generally do not cover the descriptive portion of the mark, but protect the logo, and the mark viewed as a whole. The strongest marks are those that are distinctive, and those that trademark owners use distinctively.

Affix Your Mark to Goods and Services

Not all product nicknames, business slogans, and broadcast advertising phrases are trademarks and service marks. In order for trademark rights to be created and maintained, a mark must be affixed to a specific product, or used in the provision of a particular service. Marks cannot discharge their source-identifying duties, if they cannot be seen on products, or with services. Trademarks are “affixed” by applying them directly to a product, to containers in which the product is packaged, or to tags or labels attached to the product. Service marks are “affixed” by using them in signs and other advertisements offering the services, and on letterhead and invoices through which the services are provided.

As a general rule, a mark is not a mark until it has been affixed!

This article should not be construed as legal advice, if you have a legal question concerning your use of a trademark, you should seek legal counsel or schedule an appointment with an attorney through the thatmark.net website.

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