curtains_000003766048Small1-001-300x199This week we are discussing ways you can use a third party’s mark to identify the third party’s goods or services while also advertising your own. For example, a dental office wants to let potential patients know that it uses a specific brand of dental veneers. The law allows XYZ Dental to factually state:

“XYZ Dental specializes in the fitting and application of ABC® brand veneers.”

This type of use is known as nominative fair use and as with comparative advertising and descriptive fair use, there are rules that need to be followed.
Continue Reading Branding 101: Nominative Fair Use

curtains_000003766048Small1-001-300x199Last week we discussed ways that you can use a competitor’s mark in comparative advertising. This week we will discuss use of a mark in a descriptive manner such that it is not being used as a trademark, thereby greatly reducing, if not eliminating, the possibility of the use being found to be trademark infringement.
Continue Reading Branding 101 – Trademark Descriptive Fair Use

curtains_000003766048Small1-001-300x199We have talked about why it is important to use your trademark consistently. The easiest way to be sure that everyone in your organization knows the proper way to use the company’s trademarks is to create and distribute a trademark usage manual. The trademark usage manual should include easy to follow guidelines setting out that the mark is to be used as an adjective and not a noun, as well as the proper font, colors etc. that should be used to depict the mark. The usage manual does not need to be a complex or confusing document. It should be a straightforward listing of the acceptable ways that the company’s trademark should be used.
Continue Reading Branding 101: Trademark Usage Manuals

curtains_000003766048Small1-001-300x199In our companion post we are talking about the importance of using your trademarks in a consistent manner. This consistency helps consumers know that when they see KalmKap that it identifies a product coming from a single company and that they can trust that the quality is the same as the last time they bought the product. Consistent use helps to identify your mark as being owned by you. Another way identify your marks as belonging to you is use the recognized trademark symbols and to make appropriate attribution statements somewhere within your ads.
Continue Reading Branding 101 – Proper use of trademark symbols and attribution statements

curtains_000003766048Small1-001-300x199We have discussed the need to use your trademarks as adjectives and not nouns or verbs to avoid having them becoming descriptive or even generic terms. A good quick test to see if you are using the mark correctly is to remove the mark from the sentence and see if it still makes sense. If you still have a functional sentence, you are using the mark correctly. So, “Buy XYZ surgical equipment, it will make your day easier” still makes sense without the mark: “Buy surgical equipment, it will make your day easier.” However “Buy XYZ, it will make your day easier” makes no sense without the mark: “Buy, it will make your day easier.”
Continue Reading Branding 101: Trademark Audit – Using your marks consistently (why you need a trademark style guide)

curtains_000003766048Small1-001-300x199A trademark audit is at its most basic an asset inventory. But instead of tracking down and counting blood pressure monitors, otoscopes and scalpels you are tracking down words, phrases and pictures (logos) that you are using to promote your business to the public. And instead of checking and noting the condition of physical items and culling out those that are beyond repair or use, your trademark auditor will be determining what words, phrases and pictures (logos) you are using as trademarks and whether you are using these marks properly. It may also find that you are using marks that no longer conform to your desired public image or mission statement and that need to be retired.
Continue Reading Branding 101 – The Trademark Audit: Introduction

curtains_000003766048Small1-001-300x199A trademark is an adjective. It is not a noun or a verb. Why?  Because, a trademark’s purpose is to identify the source or origin of a product, NOT to identify the product itself. You have gone to great lengths to find a mark that is not descriptive of your product, and we have discussed that generic marks can never be a trademark, so you do not now want to use your mark in such a way that you cause to become descriptive or generic.
Continue Reading Branding 101: Proper use of a trademark – It’s all in the grammar

curtains_000003766048Small1-001-300x199The mark has been chosen, the trademark search was clear, and it has been decided that the mark should be registered. The next step in the process is straightforward – file an intent to use (ITU) trademark application.

It is not necessary or recommended to wait until the mark has been used to file the application. An application can be filed based on your bone fide intent to use the mark in the future. However, the application will not register until after use begins. Once use begins, a separate statement is filed claiming this use. This statement can be filed prior to approval for publication of the mark, or after issuance of a notice of allowance. There is a blackout period, between approval for publication and issuance of the notice of allowance during which a use statement cannot be filed. If the use statement is filed prior to publication, the application will proceed to registration once the publication period is complete (if no opposition was filed).
Continue Reading Branding 101 – The Registration Process

curtains_000003766048Small1-001-300x199Once you have selected a trademark and it has been cleared for use, you can simply start using the mark. This will give you common law trademark rights. However, you should consider filing an application to register the mark with the United States Patent and Trademark Office (USPTO). There are a few questions that might come to mind when this recommendation is made: 1. Why should I register my trademarks? 2. Which of my trademarks should I register? And 3. When should I register my trademarks?
Continue Reading Branding 101 – US Federal Trademark Registration – Why, Which, and When?