Protect Your Client’s Brand – From Your Client!

James L Young

By Z. Peter Sawicki and James L. Young

Lucky you! You have a great client: she has a thriving business built on an innovative product or service delivery model, she’s shown exceptional financial and business acumen, she is a natural at marketing and she values and heeds your advice (OK, we admit this is a hypothetical). In addition, your client is building her expanding business around a brand that is clever, unique and distinctive. Indeed, the U.S. Patent and Trademark Office already agrees, and has issued a federal registration on its Principal Register for that brand.

While a memorable and registered mark is a valuable IP asset for your client, it is critical that certain steps are taken to properly maintain that mark and strengthen its effectiveness and enforceability over time. Accordingly, here are some trademark usage rules that should be followed by your client to maximize the value of that mark.

Treat the Mark As Special – Because It Is!

Make sure your client’s brand stands out when used in a textual context. To do so, display the mark in all capital letters, bolder-faced type, italics, within double quotation marks, in a stylized or graphic form, or even in a different color from the surrounding text. Emphasize the mark. Make each reference to the brand a memorable one and present the brand in a consistently special manner.

Go Back to School

A long time ago, in a classroom far, far away, you learned some basic rules of grammar including the difference between a noun, a verb and a proper adjective. Now, you can put that knowledge to use. Here’s the deal: a trademark is a proper adjective. It is not a noun. It is not a verb. Not now; not ever.

A good use example (adjective): “You don’t need to be a yogi to rock a pair of LULULEMON yoga pants!” A bad use example (noun): “Don’t be the only one in the studio without your LULULEMONs!”

Whenever possible, a trademark (the proper adjective) should always be followed by the common name of its associate product or service (the noun). Now do you remember? That’s what adjectives do – adjectives modify nouns. In this case (the “good” example), the trademark is used as an adjective to tell the reader what specific brand of yoga pants are being referenced.

Also, do not use a mark as a verb. A good use example (adjective): “I’m doing a GOOGLE search for the nearest health club.” A bad use example (verb): “I know. I’ll just GOOGLE instant beach body workouts!”

The word “brand” can also be used to set the mark up as special relative to its related product or service. When “brand” is used this way, however, present it in lowercase print (e.g., CURVES brand fitness centers; FRANZIA brand wine).

Plural and Singular Mark Modifications – Don’t

Plural and singular modifications happen only to nouns. Since trademarks are not nouns, do not add or subtract an “s” to a mark.

Good: “Our ATHLETA running shorts are lightweight.” Bad: “Try on a pair of our ATHLETAs.” If the brand ends with an “s,” don’t ever remove it to singularize the mark for any reason. This is much less likely to happen, since it typically makes the mark sound and look kind of funky – e.g., “I’d like a STARBUCK cappuccino.”

Avoid the Possessive Form

Some marks are possessive by design, such as LEVI’S jeans or JACK DANIEL’S whiskey, but most are not. Nouns can possess things, while adjectives cannot. Trademarks are adjectives. Do not do this.

Use Appropriate Symbols and Notice

Any term your client wants to designate as a trademark for products or as a service mark for services should be accompanied by a TM or SM symbol (at least in the first or most prominent instance of use of the mark). These symbols have no legal significance but are recognized worldwide as staking a claim to the designated term as someone’s trademark or service mark.

When the mark is federally registered, the statutory ® notice should be used. Alternatively, or in addition to the use of such symbols, a statement can be included (such as on a webpage or printed materials about the product or service) to identify a trademark and claim of ownership and registration. For example, “MEDIFAST is a registered trademark of Jason Enterprises, Inc.”

Make All This Advice Stick, Like VELCRO® Hook-and-Loop Fastener

As you can see, your client can be its own worst enemy by misuse or modification (or mutilation) of the client’s brand. Watch for these missteps and help keep your client’s trademark strong and distinctive.

Both you and your brand-conscious client should watch a video. Conduct a YouTube search for “Don’t Say Velcro,” turn up the volume, and enjoy some “We Are the World”- type trademark entertainment.

Mr. Sawicki and Mr. Young are shareholders at Westman, Champlin & Koehler. Pete and Jim both have over 30 years of experience obtaining, licensing, evaluating and enforcing patents. Each has also developed an extensive practice regarding the clearance, registration, licensing and enforcement of trademarks. They work closely with clients to understand their values and business plans and provide customized and effective strategies for intellectual property asset procurement, growth, management and protection. To contact Z. Peter Sawicki, call (612) 330-0581 or call James L. Young at (612) 330- 0495. Please email them directly at either psawicki@wck.com or jyoung@wck.com.