Recently, I’ve been encountering a lot of confusion among business owners as to the difference between their company name (what is registered with the Secretary of State’s Office) and their trademark or brand name. This can be especially confusing if your company name and your trademark are essentially the same, except for the corporate identity descriptor at the end (for instance, “Inc.” or “LLC”). So, what exactly do trademark lawyers mean when they say the term must be “properly used as a trademark” in interstate commerce. Well, allow me to provide some general background about what trademark are (and are not) and then I’ll illustrate with some made up examples.
What are trademarks?
A trademark is a word, phrase, symbol, logo, or any combination of these used by an individual or company used to identify the source of its goods and services in the marketplace and distinguish them from those sold by others. Business names and domain names are not necessarily “trademarks” – it’s possible they may be used as trademarks, but it’s important to always conduct a search to be sure you are not infringing the rights of others. Lastly, in the U.S. trademarks are valid for as long as they are used “in commerce.” Therefore, properly using your trademark is very important. Contrast this with business names and domain names which must continually be registered and renewed in order to be valid. Whether or not they are used is not at issue. Trademark rights are territorial in nature and specific to the goods and/or services for which they are used.
Properly using trademarks
A trademark is always an adjective, and as such it must be followed by its noun descriptor. Trademarks should never be used in the possessive tense or as verbs. If you are using your trademark in the possessive tense, chances are you are referring to your company name instead. For instance, if your company is Acme Widgets, Inc. and your brand is ACME, then the proper use of your trademark is ACME widgets in all of your marketing communications pieces. For instance, this copy might appear on your website: “ACME widgets are recognized for their easy integration into other housing units.” Similarly, if your business offers a service, the copy might look something like this: “ACME IT consultants provide expert solutions for all your computer needs.”
Contrast this with these phrases that intertwine both company information and brand messages:
Acme IT Consulting, LLC was founded in 2006 to provide outstanding service to small and medium sized businesses. ACME IT consultants offer remote help desk services along with network and server maintenance services.”
“Acme Widgets, Inc. acquired ABC, Inc., a leading parts supplier that strengthens Acme’s position as a leader in the tooling business. ACME widgets provide better control over output speed.”
When talking about the company, relay facts about the corporate entity – when it was founded, what it owns, whether it acquired another business. The corporate entity owns all the related trademarks, but otherwise, it is separate and apart from the brand. If your company name and brand share the same name, a good test is to use a substitute a different proper noun for your company name and see if the text still makes sense.
Using Trademark Symbols in Text
Properly used trademarks should be followed either by the ™ symbol if the mark is not yet registered or being used under common law rights or the ® symbol, but only once a registration certificate has issued for the specifically delineated goods and/or services set forth in the registration certificate. We also strong encourage that trademarks be offset from standard text in bolded or ALLCAPS along with the appropriate symbol.
If you have any questions or require more detailed advice about how to properly use and protect your trademark, please free to contact us.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a particular focus on trademark prosecution and enforcement. She has protected some the world’s largest brands in more than 150 countries and specializes in helping small and medium sized businesses grow and protect their brands. Contact her at firstname.lastname@example.org.
Stacey is also the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.