A trademark is something that points to a single source. In other words, a trademark distinguishes one company's products or services from those of others. For example, PEPSI cola distinguishes one company's cola from that of all other companies.
When a trademark is applied to a new type of product, the public and consumers might begin to confuse the trademark itself with the product with which it is associated. This is like offering a "kleenex" to someone who sneezes, rather than a KLEENEX brand facial tissue.
In this regard, consider what the following words have in common: escalator, linoleum, cellophane, dry ice, heroin, kerosene, trampoline and zipper. The answer is that they all used to be trademarks. Moreover, these former trademarks were all used in association with novel products and they quickly became famous.
Unfortunately, these terms also quickly became generic because the trademark owners either did not or could not stop others from using the trademarks interchangeably as the name of the products as opposed to a brand of product.
When seeking to maintain the strength of a trademark, it is also important to remember one of the basic tenets of capitalism: if you are successful, you will be copied. The corollary in the trademark world is that brand owners must constantly be vigilant.
In view of the above, to maintain the strength of a trademark, a number of basic rules should be followed.
- A brand owner must enforce its rights. A brand owner must not permit others to use its trademark or a confusingly similar mark in association with wares or services similar to those provided by the brand owner. If others use confusingly similar marks, the strength of the trademark will diminish. If the owner permits others to use the identical mark in association with identical products/services, the mark could become generic.
- A trademark should always be distinguished from the surrounding text. There are many ways to distinguish a mark. If the mark is not registered, a ™ symbol may be used beside the mark. If the mark is registered, the owner may use the ® symbol. Alternatively, an asterisk may be included beside the mark with a legend explaining that the term is a trademark of the ABC Company. The mark may also be distinguished by depicting it in all capital letters, on a separate line, or in a different font, size or colour. The key is to somehow distinguish the mark from the surrounding text.
- A trademark should be used as an adjective. In other words, a trademark should be followed by the common descriptive name of the product or service. For example:
Proper use:
– My KODAK camera
– My JEEP vehicle
Improper use:
– My KODAK
– My JEEP - A trademark should not become plural. For example:
Proper use:
– My KODAK cameras
– My JEEP vehicles
Improper use:
– My KODAKs
– My JEEPs - A trademark should not be used as a verb or gerund. For example:
Proper use:
– I'm going to ride my SKI-DOO snowmobile
– I need to make a XEROX copy
– I need to send that package by FEDEX courier
Improper use:
– I'm going SKI-DOOing
– I need to XEROX that page
– Please FEDEX that package for me
While brand owners must monitor the marketplace to ensure that their competitors do not use confusingly similar marks, brand owners must also educate their own marketing departments to ensure that their brands are used properly. Defendants in a trademark infringement action will not hesitate to prove that the plaintiff's mark has become generic by pointing to improper use of the trademark in the plaintiff's own marketing material. Unfortunately, this happens all too often.
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