Page 11 - First Coast Vol 4 No 3
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CRYSTAL BROUGHAN | Intellectual Property
USE IT OR LOSE IT! Consistency in the Use of a
Trademark
Itis not enough for a business owner to just register their trademark.  e business owner
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 quad- rant, sometimes the quadrants are empty, and many times there is no crosshair at all, but rather a bull’s eye.  is factor therefore squarely sup- ports WD–40.”
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 sev- eral best practices trademark owners should follow.
Use the trademark continuously and consistently.  is means the owner should always use the same capitalization, font, and colors. Also, the owner should use the same punc- tuation and spacing every time. Never use the plural or possessive form of a mark.
Be consistent in the use of recog- nized trademark symbols.  ere are three recognized trademark symbols: ® TM SM.  e owner may only use the ® symbol a er 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.  e TM symbol stands for trademark and should be used for marks that repre- sent goods.  e SM stands for service mark and should be used for marks that represent services.
Use of these recognized trademark symbols does not impact the own- ers trademark rights, but it does let competitors know that she owns the trademark and will protect and en- force her rights.
 e business owner should only
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use the symbols when the mark is used as an adjective to identify the source of speci c goods or services.
 is is an important distinction be- cause 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 Roll- erblade® brand inline skates to the store.
Be sure to use the same generic term to describe a product. For ex- ample, do not call it “Smith® brand baked goods” in one spot and “Smith® brand desserts” elsewhere. Also, con- sistently 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.  is can cause inconsistent use of anything from color to attribution.  e owner can help prevent this by creating brand guidelines that detail exactly what is required every time the trademark is used.  en share these guidelines with all employees – regardless of their position – and make them easily available as a refer- ence.
Register the trademark. For well- established, localized businesses, the use, state trademark registration and common law rights may su ce. How- ever, businesses with wider distribu- tion in interstate commerce and es- pecially international markets should take advantage of
the, more valuable and stronger pro- tection provided by trademark registra- tion through the USPTO.
must use it – or lose it. To maintain trademark rights, the trademark must be continuously used in commerce.  e mark must appear prominently and consistently on labels or packages of goods and on all marketing materi- als for services.
Trademarks are used to distinguish goods or services from those of their competitors. Consistent use helps customers know a product or ser- vice 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 some- one else uses your mark or a simi- lar 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 consis- tently enough for consumers to be fa- miliar with it.
Here is an example of how inconsis- tent use can weaken trademark rights.
THE INHIBITOR VS. WD-40
Je ery Sorensen started a company in 1997 and sold rust preventive prod- ucts under the trademark THE IN- HIBITOR. He also claimed common law trademark rights in a design mark associated with some of his products, a black and orange crosshair image.
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.
 e court stated, “Most damag- ing to Sorensen’s argument regard- ing this factor is his inconsistent use of the crosshair mark. Inconsistent
Crystal Broughan is a shareholder at Marks Gray, P.A. where her practice focuses primarily on intellectual property matters such as trademark, trade secrets, copyrights and domain names. She litigates infringement cases in both federal and state courts. She prepares and  les trademark and copyright applications, licensing agreements, non- compete and non-disclosure agreements for a wide variety of clients. She represents clients before the Trade- mark Trials and Appeals Board on trademark disputes and the World Intellectual Property Organization on domain name disputes. Ms. Broughan can be reached at (904) 807-2180 or at [email protected].
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