Q: What is a trademark?
A: A trademark is any word, name, symbol or device or slogan, package design or combination of these that serves to identify and distinguishes a specific product from others in the market place or in trade. Even a sound, color combination, smell or hologram can be a trademark under certain circumstances. The term trademark is often used interchangeably to identify a trademark or service mark.

Q: What is the difference between a trade name and a trademark?
A: A trade name is used to identify a company or a business and serves as the name of the company or a business. By contrast, a trademark or service mark is used to identify the source of the products or services that the company or business sells or provides. However, a trade name can also function as a trademark or service mark depending upon the context in which it is used. If a trade name is used as more than just the company name and informs consumers where a product or service is coming from, then it is also being used as a trademark or service mark. For example, if the name is used as a noun, (“You can get your traveler’s checks from American Express”), it is a trade name. However, if used as an adjective, (“You can get your American Express traveler’s checks here”), it is a trademark. Easy.

Q: How do I tell the difference between a trademark, copyright and patent?
A: Trademarks, copyrights and patents are all “intellectual property” or intangible property because they are property rights that cannot be touched or felt like personal property or real property. However, the terms have different meanings and are in fact very different forms of intellectual property.

A trademark (®, ™, SM) protects a word, phrase, symbol and/or design used with a product or service on the market. A trademark is often referred to as a brand. Trademark rights may continue indefinitely, as long as the owner continues to use the mark. However, a trademark can loose protection if its significance is lost in the marketplace by becoming a generic term. For example, aspirin is a generic term in the U.S.; however, ASPIRIN remains a trademark in many other countries.

A copyright (©) protects the original way an idea is expressed, not the idea itself. It includes artistic, literary, dramatic or musical works presented in a tangible medium such as a book, photograph or movie. This protection is given to works to prevent unauthorized copying. The general rule for a work created on or after 01-01-1978, is that the copyright lasts for the author’s lifetime plus 70 years after the author’s death, or 95 years after publication for a work made for hire. However, in the U.S. (and other countries), a copyright is created automatically when it is set in its final tangible form. Registration is not required.

A patent protects a new and useful idea, which includes a process and/or machine. It is granted by the government, providing an inventor with exclusive rights to make, use and sell a patented invention. Patents have a fixed term, usually 17 to 20 years.

Q: How do indicate my trademark rights?
A: A ™ is usually used to indicate an unregistered trademark. It is an informal notification that there is a public claim as a trademark.

An SM represents an unregistered service mark. It is also an informal notification that there is a public claim as a service mark.

The ® (the “‘R’ in a circle”) is a warning notice to advise the public that the mark is registered with the Federal government and their use provides legal benefits. This notice can be used only with registered marks. Use of a ® with any unregistered trademark may result in claims of fraud. Most other countries permit or recognize the use of the ® symbol to indicate that a trademark or service mark is registered in their respective trademark offices.

Q: What do you mean by “generic”?
A: A generic term is a word or phrase that is or has come to be the common term associated with or known as a particular category of goods or services to which it relates, thereby ceasing to function as an indicator of origin. For example, “clock” is a generic term for timepieces. Generic designations are not registrable or protectable. A trademark may potentially become generic if it becomes so widely known and used with a particular category of goods or services as to designate the category of goods or services. In such instances, the “mark” will not be registrable and a previous registration for such a “mark” may be vulnerable to cancellation by a third party. Examples of marks that have become generic over time include “escalator,” “linoleum,” “zipper” and “yo-yo.” This loss of trademark status is sometimes referred to as “genericide.” It should be noted that what is generic in one country may not necessarily be generic in another, for example, the term ASPIRIN is generic in the U.S., but is not in other countries.

Q: How do I correctly use my trademark?
A: Proper use of a trademark is essential for its continued protection. Companies must properly use their trademarks in order to aid the consumers who depend upon their goods and services and to prevent a trademark from becoming generic.

The following are some suggested guidelines for the proper use of trademarks:

ALWAYS distinguish trademarks from surrounding text with at least initial capital letters or in all capital letters. Trademarks can also be distinguished from surrounding text using bold or italic fonts or by placing the trademark within “quotes” or in a stylized form or logo type that has become associated with the mark.

EXAMPLES:
- ROLLS-ROYCE automobiles
- “adidas” footwear

ALWAYS use proper trademark form and spelling.

EXAMPLES:
- Mont Blanc fountain pen, NOT Mont Blanc
- Nescafé coffee, NOT Nes Café

ALWAYS check to see if the wording you are using includes a trademark; never assume something is generic. Then use both the trademark and the generic terms appropriately.

EXAMPLES:
- Jet Ski personal watercraft
- Bubble Wrap packaging material

NEVER use a trademark as a noun. Always use a trademark as an adjective modifying a noun.

EXAMPLES:
- LEGO toy blocks
- Amstel beer

NEVER modify a trademark to the plural form. Instead, change the generic word from singular to plural.

EXAMPLES:
- tic tac candies, NOT tic tacs
- OREO cookies, NOT OREOS

NEVER modify a trademark from its possessive form, or make a trademark possessive. Always use it the form it has been registered in.

EXAMPLE:
- Levi’s jeans, NOT Levi’s

NEVER use a trademark as a verb. Trademarks are products or services, never actions.

EXAMPLES:
- You are NOT xeroxing, but photocopying on a Xerox copier.
- You are NOT rollerblading, but in-line skating with Rollerblade in-line skates.

A good test for proper use is to remove the trademark from the sentence and see if the sentence still makes sense. If it does not then you are potentially using the mark as the descriptive term or as a verb and not as an adverb followed by a noun as you should.

Q: Should I translate my trademark for use in other countries?
A: Generally, no.

When translating text/documents into another language, trademarks should not be translated into a foreign language. There often will not be a literal translation of the term, and the significance of the trademark is not how it might translate but the source of the products or services it identifies. There are, however, situations that arise requiring translation of a mark used in text from or into languages that are based on a different character set than the original. For example, persons reading in the romance or Germanic languages can not recognize Japanese Kanji characters. In such instances, using a transliteration may be the proper method of displaying the trademark. The translator should, of course, be mindful of the possible problems presented by an un-translated or transliterated trademark, and ensure that there are no negative or undesirable connotations associated with the translated or transliterated trademark. Even without translating trademarks, many countries extend protection of a trademark to equivalent terms (if they exist) in other languages. For example: POMME COMPUTER, which would be rejected as equivalent to APPLE COMPUTER.

Q: How should I use my trademark online?
A: The same way as you use it offline. See above.

Q: Do I have to use the ® or ™ symbol every time it appears in a document?
A: No. If a trademark is acknowledged in the heading of an article or press release, it is not necessary to also acknowledge it within the body of the document. The trademark symbol need only appear in the first or most prominent mention of the mark. A single reference to the trademark is sufficient in either its first use or most prominent use within the document. If trademark is used in sections of a document which may be published or distributed separately, the TM or R symbol should be used. However, there is nothing preventing you from using it each time.

Q: Do I have to register my trademark?
A: Generally, no, you do not. However, there are some countries in which registration is mandatory in order to obtain rights in a mark. In other countries the use of the mark establishes protectable rights in a trademark.

However, registration of your trademark produces a number of advantages including:

• Providing constructive notice of ownership of the registered mark;
• Creating a presumption of validity of the registration;
• The exclusive right to use the registered mark in commerce in connection with the goods or services specified in the registration;
• Establishing the incontestability of rights in the registered mark;
• Giving the right to use the federal registration symbol ® with the mark;
• The ability to deposit copies of the registration with the United States Customs Service to prevent importation of goods bearing an infringing mark;
• The right to sue for counterfeiting of the registered mark and to obtain both civil and criminal penalties against counterfeiters; and
• The ability to file corresponding applications in many additional countries under international treaties.

Q: Do I have to search a trademark before using it or filing an application for it?
A: A trademark search is not required before filing in the U.S. and most other jurisdictions, but most practitioners agree that a search is advisable to help avoid the investment of time, energy, and money in adopting a mark that may have to be abandoned if a conflict is discovered later.

In some situations, a search before committing to a mark may be helpful, or even necessary, to avoid or defeat a claim of willful infringement. In the U.S., the European Union, and a number of other countries, the registration authority performs at least some level of search as part of the application process, but these searches are often confined to identifying other pending and registered marks, not identifying unregistered rights that might be infringed. In short, it is almost always advisable to search a mark before adopting it for use or applying for its registration.