Authored By: James A. Blomquist Attorney View Biography

Trademarks are often the most valuable asset of a company in a competitive market. Trademarks represent the goodwill and consumer recognition in the company brand and thus have significant value. Proper use of these marks is essential to avoid legal complications. Accordingly they deserve considerable efforts and reasonable expense to protect them properly. Unfortunately too many companies risk loss of their trademarks because they neglect to train employees in proper use and do not monitor their own promotional material.

If your trademark is registered with the United States Patent and Trademark Office it should be designated with a “®” symbol, such as Rollerblades®. Otherwise use the “™” symbol.

In promotional literature use the mark as an adjective, such as “Rollerblades® inline skates are the best”. Never use the mark or a variation of it as a verb; for example, do not suggest that customers would enjoy rollerblading.

Misuse of your mark could result in it becoming generic and if that occurs you lose all trademark rights. That is what happened to once famous trademarks like cellophane, escalator and aspirin.

The line between highly descriptive terms and generic names has been said to be fuzzy and undefinable. But that difference is crucial in that the law holds that a generic term can never function as a mark or be given trademark protection. On the other hand if the term is descriptive, then it is entitled to trademark protection upon proof that consumers view it as a source indicator.

“Unintentional” abandonment occurs when the trademark owner, by its own actions or lack of action, causes the mark to lose its significance as an indicator of source. This can happen by failure to use the mark for several years or by improper use.

If the owner registers the mark “MILLWORK WALLBASE” for flexible vinyl and rubber wall base then it may lose the trademark rights if it uses the mark only on a non-flexible metal product. Similarly it may lose its rights if it misuses the mark on its products or advertising. If the registered mark is “MILLWORK WALLBASE” but the product is labeled “Millwork Resilient Wall Base” and the sales brochure inconsistently refers to the product as Jonsite® Millwork Resilient Wall Base, Jonsite® Millwork, Millwork® Resilient Wall Bases, millwork wallbase and Millwork Wall Base then the owner is unlikely to be able to establish that the public perceives the term millwork wallbase as a trademark signifying a single product source. Not only does the trademark owner risk losing the registration but it may find it impossible to prevent others from using the term on competing products.

To avoid loss of trademark rights train your employees on proper trademark use and have your promotional materials reviewed periodically.

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