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TrademarksÖThe Answer to Unprotected Marketing

by Alf Nucifora

At first blush, the subject of trademark registration can force a glazing of the eyes or a racing of the pulse that is driven by fear of the unknown and the cost of venturing there. In truth, the application process, though not without its tribulations and risks, can be relatively straight-forward, particularly if negotiated with the guidance of trademark counsel. More importantly is the understanding that trademark protection is both a vital, competitive, counter-measure (it protects your turf), as well as an important tool in both the preservation and enhancement of brand value over time.

The Initial Step

You think you want to apply for a trademark (in the case of a product), or a service mark (in the case of a service). First do a "knock-out." Your attorney will run the trademark through all the filings on hand at the U.S. Patent and Trademark office. This search will tell you the probability that you will obtain a trademark registration or conversely, infringe on someone else's mark. This is a quick computer scan that costs $200-$300 and normally takes one to two days.

Assuming the decision is made to proceed with an application, the question must be asked, "Are you ready to file?" If the product is still in development, or you are not yet ready to go to market, it's probably preferable to file an "Intent-to-Use" application which, if accepted, provides the applicant with a 6-month grace period to file for formal registration (changing from "TM" to "“").

If you're ready to file for formal registration, be prepared to provide specific documentation which would include a black and white rendering of the mark and specimens of its actual use, e.g. in packaging, brochures, advertising, etc. Assuming that there are no infringements with the application, allow a period of up to nine months for approval, with an average filing cost of approximately $1500 per application. Remember that there are forty-eight official classes of application, each tied to a type of product or service, e.g. vehicles (12), musical instruments (15), advertising (35).

Trademark Rules to Live By

Once a trademark has been registered, its subsequent usage must adhere to a set of rules in order to maintain its status and viability. According to Jon Andersen of the Atlanta-based Andersen Law Firm and a specialist in trademark law, there are five simple rules that will keep the mark out of danger:

1. It's always an adjective. To avoid the mark becoming generic (Escalator used to be a trademark), always use it as you would an adjective. Don't pluralize it; use it in the possessive form or as a verb. And, always follow it with a generic noun, e.g. Xerox“ brand copier.

2. Always use the proper notice. If the mark is registered, use the “. If not and registration is pending, use the š or (SM) on the shoulder or heel of the mark. You can also use an asterisk (*) on the shoulder of the mark with the footnote "Trademark of XYZ company."

3. Always set the mark apart. Wherever possible, set the mark apart from other words or phrases by capitalizing it, using italics, or a different font or color.

4. Never alter the mark. Always keep the mark in the form it was registered. Don't abbreviate it or change its spelling. Don't hyphenate or make up new words derived from the mark. And, always use consistent colors.

5. Police the mark. Always watch the mark to insure that others do not infringe on it. Failure to identify and act upon infringement may result in the mark's diminished value or, worse still, outright loss. Infringers should be put on notice immediately and, in extreme cases, court protection in the form of an injunction should be sought. In certain circumstances, other companies can use your mark, but such use must adhere to the rules of protection and, if not, must be stopped.

Using Another Company's Trademark

Under certain circumstances another company's trademark can be used, e.g. in a comparative advertisement. But, again rules must be followed.

1. Use the mark exactly as the competitor does. Make sure to use the mark exactly the same way as the competitor does including the notice and use of colors. There are a number of states that have dilution laws that can be triggered by failing to use the mark properly.

2. Be sure that the use does not imply an endorsement. Remember that the competitor's mark identifies his goods and services and you cannot use it as an endorsement of your product or services. Ads and marketing pieces must be carefully screened to insure that there is not actual or implied endorsement. Comparative advertising does not normally require permission to use the competitor's mark, but in many instances obtaining permission would be a wise idea.

Trademark protection is one of those household duties which, if neglected, ultimately leads to brand deterioration. It can never be done too soon nor practiced too diligently. Because it's not the glamorous side of marketing, it's often overlooked. It may be time to ask the question, "How well protected is your trademark?"

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