Programs and Events
Proper Use of Trademarks in Advertising and Product Packaging



 Discussion Outline


I. What Constitutes Use?

A. Use on Goods.

B. Use in connection with Services.

II. Format of Trademarks (a little repetition….)

A. Marks should be used as adjectives to describe the relevant product or service (e. Kleenex® tissue or Google® search engine).

B. Use mark distinctively- Distinguish marks from surrounding text and other words they modify (e.g., CAPITALIZED, underlined, italicized, in boldface type or placed in  "quotation marks,").

C. Do not shorten or abbreviate marks.

D. Do not use marks in plural or possessive form.

E. Use in the exact format for which the mark is registered.

III. Use of Trademark Notices

A. Notice of Registration- only for registered marks!

B. Notice of Unregistered Rights.

C. In advertisements, trademark notice does not have to be used in every instance.

D. Permissible use of trademark notices differ from jurisdiction to jurisdiction.

E. Failure to Provide Notice.

IV. What qualifies as Trade Dress

A. Functionality

B. Distinctiveness

V. Other Tips

A. Train employees regarding proper use of trademarks (e.g., trademark use manual).

B. Review and clear all advertising and promotional copy prior to publishing and all labels and packaging prior to printing.

C. Advise customers and competitors of ownership of your marks and include guidelines regarding use of your marks on your website, etc.

D.   Maintain a file(s) with evidence of use of your marks.

VI.  Issues Regarding Specimen
A. Recently, we have seen heightened scrutiny of specimen particularly where the specimen are from advertising.

B. Fulfilling specimen requirements has become more difficult as marks are being used in connection with services that make it difficult to capture.

VII.  Facebook and other Social Media–The New Advertising Frontier

A. Use of social media sites in lieu of traditional websites presents new issues

B. Does a Facebook or LinkedIn page alone constitute use in commerce?
C. Does a Facebook page constitute Class 41 website services and use in commerce?

D. How do you counsel clients in the ever-evolving world of social media to protect their trademark rights in their names?

VIII. Use of Third Party Marks

A. Nominative
B. Attribution–proper attribution of ownership of third party marks can help avoid allegations of misuse.

C. FCC guidelines relating to comparative advertising–may apply depending upon the situation.

D. Guidelines published by others–before using a third party mark, check to see if the owner provides usage guidelines. 

E. Co-Branding Issues.

F. Avoid losing brand identity by altering it in advertising.