January 3, 2016

New Year’s Resolution for a BRAND New Year

By Bryan K. Wheelock, Principal

A new year is upon us, and we suggest that trademark owners make it a brand new year, by resolving to use their marks correctly going forward.  Proper trademark use is important to creating and maintaining trademark rights, and the rules are relatively simple — just follow the ACID test: Adjective, Consistent, Identified, and Distinctive.

A mark is an adjective identifying a particular kind of product or service, and it should be used as such.  A trademark should be paired with a generic term for the product or service.  “Buy an ACME™ widget.” is preferred over “Buy an ACME™.”

A mark should be used consistently so that it is more readily recognized by consumers.  In Reebok International Ltd. v. Kmart Corp., 849 F.Supp. 252, 31 USPQ2d  1882 (S.D.N.Y. 1994), the Court noted the limitations on the strength of Reebok’s trade dress “because Reebok has used the Stripecheck inconsistently.”

A mark should be identified as a mark and not a normal word.  Registered marks should be identified with the ® symbol, and unregistered marks with a ™.  This is pretty straight-forward, but many trademark owners drop the ball when the mark appears multiple time on a package or advertisement.  Should the mark be identified every time it appears?  Yes is should.  However at the very least the most prominent use of the mark should be identified on every “sight” – each page or each face of the package.  That way every one encountering the mark will be apprised of its trademark status.

Finally, the a mark should be used distinctively.  The mark should stand out from other words in an advertisement or on a package.  The mark should be bigger or bolder or in color. Anything that draws attention to the fact that the mark is special.

Applying the ACID test to your trademark use will help you build and maintain strong trademark rights.   This year resolve to use your marks properly, and make this a BRANDnew year!