Using Trademarks in Advertising

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Five Tips for Using a Trademark in an Advertisement

Here are few suggestions when using your trademark in an advertisement. 

  • It’s best to use the mark as an adjective and to avoid using it as a noun or verb – Say ‘Use Xerox copiers; don’t say ‘Xerox it!”
  • Avoid using the mark in the plural or possessive – don’t say “Buy several iPods. Say Buy several iPod players.
  • Always distinguish the mark – that is, set it apart, highlight it and make it clear that it’s not like other words or images in the advertisement
  • Always use proper notice symbols -- see below
  • Use the mark consistently -  consistency is the key to brand protection and effectiveness in advertising – just ask Coca-Cola.

Trademark Notice Symbols in Ads

The ® symbol should only be used in connection with a mark that is federally registered and should only be applied when the mark is used in connection with the goods.  There is no requirement that the ® symbol must be used for federally registered marks. However, if the ® symbol or the phrases  "Registered in U.S. Patent & Trademark Office" or "Reg.U.S. Pat. & Tm. Off" are not used a federal court is not empowered to award monetary damages to the plaintiff in a federal trademark infringement case. In addition, these forms of notice serve as constructive notice of the registration and a subsequent infringer cannot argue that it adopted a similar mark in good faith. This may be relevant as a factor in a determination of likelihood of confusion and damages for infringement.

It is not necessary to place the ® symbol on every use of the mark on the product. For example, in the case of a software program in which the trademark is used repeatedly on the box (i.e., on the cover, within the advertising text or as part of the program explanation). It is only necessary to apply the ® symbol once on the most prominent version of the mark on each product.

Improper use of the ® symbol may have a negative impact on the mark. If, for example, the use of the ® symbol is fraudulent (i.e., intended to deceive) then the Patent and Trademark Office or competitors may object to or prevent the subsequent federal registration of the mark. A ® symbol cannot be used for an intent-to use mark until the Certificate of Registration has been issued.

The symbols “TM” and “SM” (for service mark) are often used when a mark is not registered and signify common law ownership rights. Although there is no particular statutory significance to the ™ and _ symbols, a trademark owner may argue that the use of these symbols provides notice of a proprietary claim under common law. Sometimes the ® and ™ symbol are used in conjunction, for example, prior to its registration of the Word trademark, Microsoft used the following -- Microsoft® Word™ for Windows™.

Using Other Company's Trademarks in Advertising

It’s permissible to use a trademark when making accurate comparative product statements in advertisements. However, since comparative advertisements tend to provoke trademark owners into legal action, an attorney knowledgeable in trademark or business law should review the advertisement before publication. Keep in mind that modification of another company’s trademark may result in a claim of dilution. Use of another company’s trademark in keyword advertising is usually okay but it can sometimes trigger problems. Review this article for more information on keywords. If you are using another company's trademark because it is an ingredient or element of your product or service, make sure to include proper notice for that product and avoid giving undue prominence to the element or ingredient the ad. For example, if your softdrink contains Cadbury chocolate, your advertisements should not lead a consumer to believe that your product is associated with or endorsed by the Cadbury company. A prominently placed explanatory disclaimer may also help reduce consumer confusion.

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