How to Use and Protect Your Trademark without a Registration

Guest Post by:  Kristin Cornuelle /Senior Associate at Orrick

Many companies are interested in protecting their brands, but are sometimes unclear about how to protect a trademark, and most importantly, how to use it properly.  Trademarks do not have to be registered with the U.S. Patent and Trademark Office (USPTO) in order for the owner to have rights.  Even if you do not have a state or federal trademark registration, you may have common law trademark rights – at least with respect to the geographical area you are operating in – if you are using your mark in connection with your product or service and providing it in commerce.

Although you cannot use the circle R symbol ® until the trademark is registered with the USPTO, you can use a TM or SM superscript to indicate that you are claiming common law rights in your mark.  When you are using a trademark in your advertising material or on your website, consider using the TM or SM superscript in the upper right hand corner.  Try to use the TM or SM superscript in the first or most prominent use of the mark on the web page or collateral. In other words, the first time the trademark appears in the collateral, advertisement or web page.  No need to use it every time, but the most prominent usage will put viewers or readers on notice that you are claiming common law rights to that mark.  The TM or SM superscript can be a great deterrent to other individuals or entities who are considering the same or similar mark for their product or services.

It is also important to highlight your trademark in some way to set it apart from the rest of your advertising language.  You do not need to capitalize the trademark, but it is a good idea to highlight it in some way to pull it out from general text, either through bold, underline or italics or a different font or stylization.  You can also use it consistently on each webpage in a prominent location, such as the header or footer, in a different size than your other web content.

Another common mistake many make is using a trademark as a noun or a verb.  Make sure that you only use the trademark as an adjective, not as a noun or verb, or as a plural or possessive.  For example, “Our ORRICK legal services support start-up companies who are looking to….”

Of course, you can always file a trademark application with the USPTO and obtain some wonderful benefits, and you should definitely consider this option.  In the meantime, these tips should give you a start on protecting your brand without one!

Trademarks

If you have questions about trademarks and how to protect or enforce them, please contact Kristin Cornuelle at kcornuelle@orrick.com

For more information as presented in our August 24th Trademarks session, please click the image to the left.


Kristin Cornuelle, a senior associate in the Portland office, is a member of the Intellectual Property Group and the Trademark, Copyright and False Advertising Group. Kristin has experience with both intellectual property and general commercial litigation matters.

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