Use It or Lose It! Consistency in the Use of a Trademark

Use of Trademark
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It is not enough for a business owner to just register their trademark. The business owner must use it – or lose it. To maintain trademark rights, the trademark must be continuously used in commerce. The mark must appear prominently and consistently on labels or packages of goods and on all marketing materials for services.

Trademarks are used to distinguish goods or services from those of their competitors. Consistent use helps customers know a product or service comes from a single company. Marks also help customers trust that the quality will be the same as the last time they made a purchase.

Infringement occurs when someone else uses your mark or a similar mark and there is a likelihood of confusion among consumers as to the source of the goods or services. Infringement is hard to prove if you are not using your trademark consistently enough for consumers to be familiar with it.

Here is an example of how inconsistent use can weaken trademark rights.

THE INHIBITOR VS. WD-40

Jeffery Sorensen started a company in 1997 and sold rust preventive products under the trademark THE INHIBITOR. He also claimed common law trademark rights in a design mark associated with some of his products, a black and orange crosshair image.

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In 2011, the WD-40 Company started to sell WD-40 Specialist Long- Term Corrosion Inhibitor, which also featured an orange crosshair image.

In the case of Sorensen v. WD-40 Company, No. 14-3067 (7th Cir. June 11, 2015), Sorensen sued WD-40 for infringing both THE INHIBITOR and crosshair trademarks.

The court stated, “Most damaging to Sorensen’s argument regarding this factor is his inconsistent use of the crosshair mark. Inconsistent use makes a symbol less helpful to consumers as a source indicator, and therefore a weaker mark. Sorensen’s crosshair has been used since 1997, but inconsistently—sometimes the crosshair has symbols in each quadrant, sometimes the quadrants are empty, and many times there is no crosshair at all, but rather a bull’s eye. This factor therefore squarely supports WD–40.”

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Ultimately, Sorensen lost on all counts.

BEST PRACTICES TO PROTECT A TRADEMARK

A trademark is valuable intellectual property, and the owner can – and should – protect it. Here are several best practices trademark owners should follow.

Use the trademark continuously and consistently. This means the owner should always use the same capitalization, font, and colors. Also, the owner should use the same punctuation and spacing every time. Never use the plural or possessive form of a mark.

Be consistent in the use of recognized trademark symbols. There are three recognized trademark symbols: TM SM. The owner may only use the symbol after the owner has received a trademark registration from the USPTO. Before the owner receives a registration, she can use TM or SM to let the public know she is claiming a common law right to the mark. The TM symbol stands for trademark and should be used for marks that represent goods. The SM stands for service mark and should be used for marks that represent services.

Use of these recognized trademark symbols does not impact the owners trademark rights, but it does let competitors know that she owns the trademark and will protect and enforce her rights.

The business owner should only use the symbols when the mark is used as an adjective to identify the source of specific goods or services.

This is an important distinction because if it is used as a noun or verb, it could become generic. Generic marks are not entitled to legal protection. Here are a few examples:

Incorrect: use a Kleenex, Xerox brand photocopier, rollerblade to the store.

Correct: Kleenex brand tissues, Xerox brand photocopier, ride Rollerblade brand inline skates to the store.

Be sure to use the same generic term to describe a product. For example, do not call it “Smith brand baked goods” in one spot and “Smith brand desserts” elsewhere. Also, consistently use an attribution statement on marketing materials, ads, product packaging, website, manuals, etc.

Create branding guidelines. A company may have many employees who use the trademark on a regular basis. This can cause inconsistent use of anything from color to attribution. The owner can help prevent this by creating brand guidelines that detail exactly what is required every time the trademark is used. Then share these guidelines with all employees – regardless of their position – and make them easily available as a reference.

Register the trademark. For well-established, localized businesses, the use, state trademark registration and common law rights may suffice. However, businesses with wider distribution in interstate commerce and especially international markets should take advantage of the, more valuable and stronger protection provided by trademark registration through the USPTO. Crystal Broughan

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