Razzle dazzle ’em: Trademark use

Unfortunately, many businesspeople are not initially knowledgeable about use of trademarks to qualify for United States federal register trademark registration. This use may seem a bit tricky at first, but eventually most business owners get the ‘hang’ of it.

Initially the trademark applicant should understand that the trademark must be used continuously in a reasonable business volume outside the owner’s primary state of business. For example, if green applies are grown and packaged in Washington, then these apples must be distributed outside Washington in business appropriate quantities. This continuous volume could be 100 bushels per month shipped to Illinois, if this is a reasonable volume in the apple industry.

There are numerous options for affixing a trademark to the goods associated with this trademark, and which generally differ from rules for affixation for service marks. Returning to our green apples example, these items are products and therefore require a trademark. The green apples can each be stamped with the trademark, or an adhesive label bearing the trademark is attached to each green apple. Another option is the display of the trademark upon the package or container for the apples.

Other acceptable affixations for federal registration include instructions inserted within the boxes or packages if these instructions (i) prominently display the trademark and (ii) are routinely placed within these boxes or packages. Hard copy paper catalogues that are distributed and display the trademark on each page with purchase information are also acceptable. Online sites are acceptable, but the trademark must prominently appear near (i) an image of the product or (ii) a written description of the product. There should also be purchase or order information prominently displayed upon the site. Infomercials are also acceptable if property formatted with the trademark.

In my professional experience, many business owners have already invested financially in stationary, websites, labels and decals before they appear for an initial office consultation. More often than not, these owners must thereafter invest additional funds to modify these items for federal registration of their trademarks. This financial fact generally arrives as an extremely unpleasant surprise.

To avoid this problem, it is best to seek the advice of an experienced trademark attorney before website, labels, decals, engravings, stampings, and instructions are authorized for production. You would be surprised how often even decals and labels must be redesigned to meet the trademark office expectations for appropriate use. In fact, decals, labels, business cards (for service marks) and website address logos must be particularly formatted to qualify as trademarks per se, in addition to qualifying for trademark use. For example, although many owners believe their websites are acceptable for trademark registration, all my clients have required modification of their sites. After these modifications were made, the trademark office has found their trademark use on the website acceptable for registration.

© 2011 Adrienne B. Naumann
Ms. Naumann does not sponsor or endorse advertisements at adriennebnaumann.wordpress.com or linked in sites.

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