PLEASE TAKE NOTE: This page is intended ONLY for readers who have been directed to this page by a separate written communication from an attorney in our firm and does not constitute legal advice.
Maintain, Protect and Enforce Your Trademarks
Enlist legal counsel to help you in the these trademark best practices, among others:
□ Search and clear a mark for use prior to using it.
□ In written materials, use a mark properly by following these guidelines :
Avoid using the ® symbol when goods or services properly bearing the symbol will be transmitted into a country in which the mark is not registered. In that event, take action to search and register the mark in the given country and use the superscripted TM until the mark is registered in that country. Avoid using the ® symbol for marks which are not nationally registered in a given country.
□ Provide advance copies/mock-ups of your advertising and packaging materials to counsel for review prior to using the same on your goods or services for the first time.
□ If appropriate, register the mark in the United States and foreign jurisdictions desired, and make all renewal and maintenance filings on time. With regard to any incontestability filings, be sure to have those filings perfected as soon as the registration is eligible, as opposed to waiting until the end of the filing window.
□ Where appropriate, faithfully use the ® symbol to denote your registered marks and the ™ symbol to denote unregistered marks. This can be crucial, especially if a competitor were to register your mark(s), or a confusingly similar mark(s), before you have attended to such a filing. For information on how to properly use designations and marking click here:
□ When applying to register a mark, be painstakingly candid concerning your first use date and the description of all goods/services pertaining to the given first use date for each items of goods/services.
□ Consider registering related internet domain names in various forms, and various top level extensions.
□ Police your rights in the mark. Consider instituting your own regular review of the market place and key internet sources such as google.com, froogle.com, yahoo.com, dogpile.com, eBay.com, amazon.com, and review national current news sources, industry specific publications, telephone white page and yellow page listings, and press release databases such as prweb.com, prnewswire.com.
□ When permitting others to use your mark, have reasonable written quality controls, over, for example, the nature, characteristics, quality, duration, and extent of such use.
□ When acquiring a mark, make sure that the "goodwill" is also a part of the transaction and is conveyed with the mark.
□ Maintain reasonable awareness of the marketplace and potential conflicting uses. Be alert.
□ Monitor newly filed or pending trademark applications which do or could adversely affect your rights.
□ Take action to oppose conflicting third party applications, and to cancel conflicting third party registrations.
□ When advisable, take action via legal counsel to contact infringers, resolve infringing use, and file a lawsuit suit if necessary.
□ Avoid abandonment of the mark that may result from non-use or interrupted use of the mark.
□ Avoid abandonment of the mark that may result from generic use of the mark (for example using a noun form of the mark). A trademark owner’s product or service may become so popular that consumers are tempted to use it as the generic name of the product or service being marketed (e.g., KLEENEX for facial tissues, BAND-AID for bandages, or XEROX for photocopies). A trademark that is generic is no longer distinctive because it ceases to identify the source of the product or services sold under that mark. It should therefore generally be used as an adjective when describing the claimed goods or services, and never as a noun or as the name of the product.
□ Avoid abandonment of the mark that may result from making material changes in the mark. If a mark is evolving or changing, file a new trademark application(s) tailored to your use or intended use of the mark.
□ Avoid changing the types of goods or services offered under the registered mark. File a new trademark application(s) tailored to your use or intended use of the mark with respect to new or different goods and services than those set forth in your registration.
Doing the above contributes to value to in your mark, maintaining a strong mark, and success when action against others is required. Failure to do these things can result in the weakening, diminishing, or outright abandonment of your mark.