Proper Use of Trademarks

 

A Trade-mark is a valuable business asset. In order to establish and maintain this valuable asset, certain procedures must be followed in the actual use of a Trade-mark.

If a Trade-mark is not properly used, the right to its exclusive use may be lost, and if that Trade-mark has been registered, the registration may be expunged. The use of a Trade-mark must be such as to distinguish the services and wares with which it is used from other services and wares. If the mark does not distinguish the product or service with which it is associated from others, or if it becomes non-distinctive, then it will be invalid and unenforceable.

In order to ensure proper use of your Trade-mark, keep the following questions in mind:

1.           Am I giving proper notice to my consumers of my Trade-mark rights?

In order to protect your mark, it is important to alert the public of your ownership of the Trade-mark. For example, if your Canadian Trade-mark is registered it should be accompanied by the symbol ™, and if the registration process has been completed, it should accompanied by the symbol ®.

2.           Am I using my Trade-mark as an adjective?

 As a Trade-mark is meant to describe the quality of your services ore wares, it should never be used as a noun or verb, but rather always as an adjective. For example:

  • You are not Xeroxing, but photocopying with a Xerox printer;
  • You are not FedEx-ing but using a FedEx courier to deliver your parcel or document; and
  • You are not wearing Nikes, but rather Nike shoes or footwear.

 Your Trade-mark must always be used in the form that in which it was registered, whether as a logo or as words. If it is registered as a logo, you may lose your exclusive rights to that logo if you do not use the logo exactly as registered. Very similarly, if your Trade-mark is a word or a phrase, changing the spelling is not use of your Trade-mark. For example:

  • Could you pass me the Kleenex Facial Tissues, not the Kleenexes;
  • I am selling Levi’s Jeans, not Levi Jeans;

3.           Is my Trade-mark Clear and Distinct?

The purpose of a Trade-mark is to create a distinct commercial impression in the mind of the consumer. As such, you may wish to consider using it in boldface or a different font.

4.           Are you asserting your Trade-mark rights?

 If you permit anyone to use your Trade-mark without your consent or in ways which that are not approved by you, your Trade-mark may be part of the “public domain” and as such you will lose the right to its exclusive use. It is important, in order to protect your rights to a Trade-mark that you restrict its use to licensees, pursuant to a properly executed licence agreement. If any third party uses your Trade-mark, then it is important that you request that third party to cease and desist, in order to avoid a claim that you knowingly permitted that third party to use your mark. If you should become aware of that any person is using a similar or confusing mark, you should consult your Trade-mark consult in order to preserve the validity and right to use your Trade-mark.