[nafex] Trademarks, copyrights discussion

john.mosko at engelhard.com john.mosko at engelhard.com
Mon Feb 4 11:04:25 EST 2002


A few additional considerations that I've picked up over time.

A registered trademark needs to be actively used in commerce to keep it
valid.
Essentially, you "earn" the right to use and keep a trademark through
proper usage.  So if you think you have a great name for an apple and you
register it, you'll have to use the name in a proven commercial transaction
within, I believe, a year or two, max.  This safeguard is to prevent
companies from thinking up bunches of great trademarks then reserving them
away for future use.

A trademark needs to appear on the goods as they are sold.  When you
register you have to enclose photographs or actual bags, tags, etc.

To keep a trademark from becoming generic, not only must you use it
correctly, but you must enforce, as is reasonably possible, others to use
it properly in their publications.  Large companies have people on staff
soley to enforce proper use.   Products like Kerosene and Escalator
were once trademarks but are now generic.  It is many company's nightmare
to lose a valuable registered trademark.

Using a trademark properly means using the trademark as a modifier, not as
a noun.  So one would state, say, for example: Ultracrisp(R) apple -  at
least, the
first time in a document.  Uses like "Ultracrisp tastes great" or
possessives like "Ultracrisp's growth habit is spreading" are generally
undesirable usages.  Even saying something like "ABC company's Ultracrisp
is good" is not preferred because of a subtle implication that this is
ABC's Ultracrisp and there may be other Ultracrisps out there.

You should use the trademark or registered trademark symbol following the
trademark at least once per document.

There is an implied and sometimes stated "brand of" between the trademark
and the generic noun.  Some consumer product emphasize this, as in Scotch
(R) brand of adhesive tape.

It's harder to get a strong trademark lately.  You need to have a trademark
search (some firms specialize in this) to determine if the trademark is
already being used somewhere.  Since there are just so many words and many
products, you might be surprised to know that the same word can be used in
many trademarks - albeit it likely will be a weaker trademark.
Some searches may show that there are dozens of companies using a given
trademark. Try looking up a common word like Fortress or Millenium and
you'll find numerous uses in a variety of industries. If your use is not in
the same stream of
commerce and there is no likelyhood of confusion with the consumer, you may
be granted the trademark, but only for a defined area of commerce.   This
is why new names of products and companies are trending towards
unique-sounding made-up words. Kodak brand of photographic supplies is a
great trademark - Kodak is a made-up word.

Trademarks are not supposed to be descriptive. That's why you can have
Apple brand of computers but not Apple brand of apple.  Even Fresh brand of
apple would be weak since it's not only a common word but it's descriptive.

Trademark attorneys talk about strong trademarks and weak ones.  Some
factors to have a strong trademark:
1. Unique word, not a common word that has already been used in another
industry - Kodak
2. Ubiquitous use and publicity - like Coca Cola
3. Proper use by the owner and enforcement by the owner of others - XYZ
brand of paper, XYZ is a registered trademark of the ABC Company
4. Non-descriptive of an actual trait of the product - like Apple computer

If your want all of the details there is an excellent web page for the US
Patent and Trademark
Office.  It is http://www.uspto.gov/.

John Mosko


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