1. Understanding Trademarks
A Global Perspective
Trademarks are an extremely valuable asset that not only help sell a business’s products or services but also have tangible value. For many, a trademark is the means by which the customer identifies and distinguishes the products or services of one company from those of another.
This presentation aims to take the mystery out of trademarks, explains what they are and how to obtain rights in them, and provides a brief overview on how to protect them.
[The presentation is aimed at business people within a company who seek a basic knowledge of trademarks and why they are important.]

2. Types of Intellectual Property
Copyright
Patent
Industrial Design
Utility Model
Trademark
Trade Name
Trade Dress
Trade Secret
Right of Publicity
Technology transfer contracts, know-how, customer lists, distribution and logistics systems, topography/ circuit layout, plant breeders’ rights, etc.
Trademarks, copyrights, patents, designs and trade secrets generally are described as intellectual property or intangible property because they are property rights that cannot be touched or felt, unlike personal property (e.g., a car) or real property (land). The terms, however, define different things.
A copyright protects the original way an idea is expressed, not the idea itself. It includes artistic, literary, dramatic or musical works presented in a tangible medium, such as a book, photograph or movie. Software can also be protected by copyright. This protection is given to works to prevent unauthorized copying. Copyrights have a fixed term but do not require registration and can be valid internationally.
A patent protects the implementation of a new and useful idea, which includes a process and/or a machine. Patent protection is granted by governments, providing an inventor with exclusive rights to make, use and sell a patented invention. Patents have a fixed term and are territorial – that is, the patent must be protected in each country where you want to be able to assert your rights.
A trademark protects a word, a symbol or a combination thereof used with in connection with a product or service in the marketplace. It is often referred to as a brand. Some countries also allow the registration as trademarks of nontraditional marks such as sounds, colors, slogans, holograms, product configurations or shapes. Trademarks are also territorial (with certain limited exceptions for very famous marks), and so, again, generally action to obtain and protect trademark rights must be taken in each country of interest. Trademark rights may continue indefinitely as long as the mark neither is abandoned by its owner nor loses its significance as a trademark by becoming a generic term (e.g., escalator, linoleum, zipper). Trademark rights usually are acquired through registration, although, in some countries, rights in trademarks can also be obtained just by use – these are called common law rights. Rights in a registered trademark are granted for a fixed term, which can be renewed for further fixed terms.
A trade secret can be any type of information used in one’s business and kept secret from others that gives the business a competitive advantage over competitors that do not know the secret information. The advantage is that a trade secret can last forever as long as the information is kept confidential. The downside is that once the information is disclosed, the owner of the secret has limited resources to maintain his or her competitive advantage.
Right of publicity is the right of an individual to control the commercial use of his or her identity, which includes an image, voice, signature or anything else that can be associated exclusively with a particular individual. In the United States, right of publicity is governed by state laws.
In some countries, there are other IP rights that can be protected (as listed on the slide).
This presentation is going to focus on just one intellectual property right – a trademark.

3. What Is a Trademark? Word Symbol Slogan JUST DO IT.
Product or packaging
shape or distinguishing guise
A trademark in its broadest sense is any word, name, symbol, slogan, design or device, package design, color, sound, touch, smell or combination thereof that identifies the source of the goods and/or services used in connection with the mark and distinguishes that source from others in the marketplace.
that identifies the source of a specific product or service and distinguishes it from others in the marketplace.

4. Trademarks and Service Marks
examples
In many countries, the term “trademark” refers to a mark that is used for goods (e.g., a car) and/or services (e.g., car repair services). Other countries use the term “trademark” to refer to any word, name, symbol, etc., that distinguishes a specific source of a PRODUCT from others in the marketplace and the term “service mark” to refer to any word, name, symbol, etc., that distinguishes the source of a specific SERVICE from others in the marketplace.
A service mark is, therefore, similar to a trademark, but it is used in connection with services (typically in advertising) to identify and distinguish the services of one source from those of others.

5. Nontraditional Marks Sound Color Fragrance Design of a business
establishment
Motion
Trademark protection can extend to nontraditional marks, such as sound, color, smell and product configuration. For example, the THX sound mark acts as a source identifier, as does the distinctive blue color of Tiffany’s jewelry box. A fragrance can act as a trademark; for instance, a scent in connection with sewing thread and embroidery yarn was registered where the scent was deemed not functional or an essential feature of the product. Other examples of nontraditional trade dress marks include Lamborghini’s motion mark for the car’s vertically opening doors; animated characters (e.g., the California Raisins or the M&M characters); and fabric designs that have obtained secondary meaning (e.g., Burberry’s plaid design).
Not all jurisdictions recognize all nontraditional marks. You will want to check with counsel in each jurisdiction of interest to see whether that jurisdiction’s trademark law allows protection of a specific nontraditional mark.

6. Other Kinds of Marks Collective mark Certification mark
“Official marks” in Canada
A collective membership mark, also called a collective mark, is used to indicate membership in a group or an association when only members of the group or organization can use the collective mark. A collective mark distinguishes goods and services in accordance with particular characteristics and/or qualities defined by the group or association. An example of a collective mark is the LIONS CLUB mark, which indicates membership in that association.
A certification mark is used to certify the quality, regional origin or other origin of a product or service. A certification mark certifies that a product or service meets a certain standard of quality or is of a regional origin. An example of a certification mark is the "Woolmark," used to identify goods that are 100% wool.
The owner of a certification mark does not use the mark on its own goods or services, but rather allows others who meet a certain set of standards to use the mark on their goods or services.
“Official marks” are unique to Canada.
Paragraph 9 of the Canadian Trade-marks Act provides that no person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, any badge, crest, emblem or mark adopted and used by any public authority in Canada as an official mark in respect of which the Registrar has given public notice of its adoption and use.
Similar rights are given to universities in Canada.
Official marks give very broad privileges to public authorities and universities who adopt and use them and can result in serious restrictions on the ability of others to expand their use of a registered trade-mark, obtain registration of a trademark they have been using, or to adopt a new mark that resembles the official mark.
This is a general prohibition and it does not matter whether there is overlap with respect to the products or services offered in association with the trademark and the official mark, or the channels of trade.
Official Marks are not subject to examination for compliance with Trade-mark Act requirements for regular trademarks, are not subject to opposition proceedings and do not require renewal as they are indefinite in duration.

7. Trademark vs. Trade/Business Name
Trade/Business Name: identifies a company or business.
– Example: The Coca-Cola Company
Trademark: identifies the goods or services of that company.
– Example:
A trade name or business name is used to identify a company or a business and serves as the name of the company or business. In contrast, a trademark or service mark is used to identify the source of the products or services that the company or business sells or provides.
However, a trade name or business name can also function as a trademark or service mark depending upon the context in which it is used. If a trade/business name is used as more than just the company name and it informs consumers where a product or service is coming from, it is being used as a trademark or service mark. For example, if the name is used as a noun ("You can get your traveler's checks from American Express"), it is a trade name; if it is used as an adjective ("You can get your AMERICAN EXPRESS traveler's checks here"), it is a trademark.
One company may have several different brands. For example, The Coca-Cola Company has brands for its soft drinks, energy drinks, juices, coffee drinks, mineral waters, etc., such as SPRITE, FULL THROTTLE, DASANI and so forth.
Usually, the standards for registering trade names or business names usually are lower than the standards for trademark registration. Identical or near-identical trade or business names can coexist, although certain factors may prevent coexistence, such as identically or similarly named companies that are engaged in closely related business fields. Some laws do exist, however, to protect trade names and prohibit trade name infringement.
In some jurisdictions, existing trademark rights can be a potential obstacle to new trade or business names if the trademark and the trade or business name are identical or significantly similar. The inverse of the aforementioned is likewise correct, i.e., an existing trade or business name can be a potential obstacle to a new trademark if sufficient similarities are present.

8. Functions of a Trademark
Indicates the source or origin of goods or services.
Assures consumers of the quality of goods bearing the mark.
Creates business goodwill and brand awareness.
Trademarks protect consumers at the same time as they protect businesses.
Trademarks function as source identifiers, since they identify one seller’s goods and services and distinguish them from goods and services offered by others. For example, consumers understand that all products bearing the MICROSOFT trademark come from the same source.
Trademarks also signify that goods and services bearing the same trademark are of equal quality. Chocolate bearing the GODIVA trademark is all of the same quality; chocolate bearing the LINDT trademark is of a different (not necessarily lesser, just different) quality; chocolate bearing the M&M’s mark is of yet another different (but not necessarily lesser) quality. Goods and services bearing the same mark are expected to be of equal quality; therefore, consumers know what to expect when they purchase a product or service on or in connection with which a particular trademark is used. Consumers identify a particular trademark with a particular quality, and consequently trademarks are essential to creating goodwill and brand awareness among consumers.

9. Process of Securing a Trademark
Select
Clear
Protect
Ideally a business should follow a careful three-step procedure for adopting and protecting a new mark.
The first step (selection) is to prepare, possibly with the assistance of marketing or advertising consultants, a list of potential marks, taking into account the countries where the mark is to be used or registered. You should also consider whether you need trademarks translated and/or transliterated into the local language and the Roman alphabet (e.g., Chinese, Japanese, Korean, Thai, Arabic, Cyrillic, Latin languages).
The second step (clearance) is to rule out marks that are not registrable or protectable. Registration generally is the easiest way to obtain protection – thus, if a mark is not registrable, generally it will be more difficult to protect. This step should include conducting a search to make sure the proposed mark is available for use and registration (i.e., it does not infringe someone else’s rights or has any negative or derogatory connotations and is appropriate for the countries where the mark is to be used or registered (e.g., NOVA is a trademark used in some countries as the trademark for a car, but “No va” in Spanish means “it does not go” and may not be appropriate for the product name of a car).
The final step is to take appropriate steps to protect rights in the mark through proper use, registration and/or enforcement. In most countries, the first to register has superior rights. In countries that recognize common law rights, such as the United States, Canada, and the United Kingdom, commencing proper use can confer limited protection.
We will now discuss each of these steps in more detail.

10. Distinctiveness Spectrum
Selecting a Mark
Distinctiveness Spectrum
In selecting a mark, companies frequently select a word that is “catchy” and describes a characteristic of the goods or services. The more descriptive the mark, the less protection it provides; this means that other parties may be free to use descriptive words to advertise competitive products. (Examples: SINGAPORE; UNITED AIRLINES.) Conversely, the less descriptive the mark, the greater the chances of exclusive protection for the mark.
The categories of distinctiveness, ranked in terms of strength from greatest to weakest, are as follows:
(a) Fanciful Marks: created from words that are coined or made up and that have no meaning in relation to the goods or services with which they are used. (Examples: HÄAGEN-DAZS for ice cream; EXXON for petroleum products.)
(b) Arbitrary Marks: created from existing words but have no meaning in relation to the goods or services. Fanciful and arbitrary marks are easier to protect but can be more expensive to promote. (Examples: APPLE for computers; TIDE for detergent.)
(c) Suggestive Marks: suggest, rather than describe, the goods or services or some characteristic thereof. The consumer must use imagination to understand the connection. (Examples: COPPERTONE for suntan oil; BURGER KING for quick-service burger restaurants.) Although suggestive marks are self-advertisers and, thus, easier to promote than arbitrary marks, they are subject to more conflict and may be afforded a narrower scope of protection.
(d) Descriptive Marks: describe either the goods or services or a characteristic or quality thereof. (Example: AMERICAN AIRLINES for airline services.) Included in this group are (1) laudatory words that attribute superiority to the goods (e.g., GOLD MEDAL and SUPREME), (2) geographic terms and (3) surnames. They are difficult to enforce unless the owner can show that the mark has become distinctive as applied to the goods or services.
(e) Generic Terms: consist of the common name of the goods or services to which they are applied. They are not capable of acquiring secondary meaning when used in their generic sense, and, thus, are not protectable as marks when so used. (Examples: computer, automobile, shuttle.)
The more distinctive the mark, the greater its level of legal protectability. Generic marks are not capable of trademark protection. Descriptive marks are capable of protection only with a showing of secondary meaning.

11. Trademark Searches International screening search
Country-specific search
Trademark registers – classes/categories
Corporate names
Internet uses and domain names
Other directories/dictionaries
Local expertise
Once a protectable mark has been selected, it is important to make sure the mark is available for use in the countries where you want to use it – for example, where the product is made and sold (or intended to be manufactured/sold) or where the services are provided (or intended to be provided). The only way to determine whether a mark is available is to conduct a search. Often this is done through a two-step process.
If you intend to use your marks in a number of countries, you could first conduct an international screening search – a quick search of various country trademark registers. A screening search is less expensive than a more comprehensive search and helps to eliminate marks that will obviously have a hard time being registered. Some countries have searchable online databases that can be accessed for free. If the international search reveals nothing of concern, the next step is to perform a more detailed search of each country’s trademark office’s database to see if the records reveal a confusingly similar mark that has already been registered or that is the subject of a pending application for the same or similar products or services. In most countries, the trademark registers are divided into classes, or categories, of registration. Generally, an application can be filed in one or more classes (some countries require a separate application for each class). Most countries follow the same classification system.
It is possible for the same mark to be registered for different products and/or services. Conversely, very famous marks, even if registered in only a few classes or categories of registration, sometimes are given wider protection and so will not be available for registration. These are called “well-known marks.” To illustrate, a car manufacturer would almost certainly not be allowed to register the COCA-COLA mark for cars or car servicing even if The Coca-Cola Company had no registrations in the classes for cars and car servicing. Because the mark is so well known, the public would assume that anyone selling cars under the mark was somehow connected with The Coca-Cola Company, and thus such use would “dilute” the value of the mark.
In countries where trademark rights can be acquired by use, a more comprehensive search is recommended. Other databases, such as trade name or business name databases and databases to determine if the mark is in use in articles or company marketing materials, in Internet domain names or otherwise on the Internet, should also be searched. Searching of additional sources, such as telephone directories and various relevant dictionaries, is also advisable. Many countries have trademark law provisions stating that good-faith prior users have rights in a mark, even if it is not registered with the trademark office. Even in countries where trademark rights are acquired only through registration, comprehensive searches help evaluate whether the desired mark is in use.
For conducting the screening searches, many companies use local counsel with specific expertise in the region of interest. There are two benefits to using local counsel. First, local counsel will have expertise concerning that country’s laws and procedures, and thus can provide a more comprehensive opinion concerning what can and cannot be registered. Second, local counsel will be able to advise whether the mark being cleared has any unintended or adverse connotation in that country.

12. Obtaining Trademark Rights
Rights are territorial – may be registered through:
Single trademark office
Regional trademark systems
Madrid (“International Registration”) system
As mentioned above, trademark rights are territorial; therefore, they must be obtained on a country-by-country basis (with the exception of regional trademark options such as those available in the European Community (Community trade marks (CTMs)) and in certain African nations that have formed a central registration system (African Intellectual Property Organization (OAPI)), which provide unitary protection for a certain region). A number of countries throughout the world are also parties to treaties called the Madrid Agreement and the Madrid Protocol, through which a company or individual may seek an “International Registration” and “extensions” of trademark protection in several countries through a single filing in the applicant’s home country. Though the filing process is made uniform under this system, the determination of whether rights are available is still made by each “designated” country’s trademark authority. This topic is discussed in detail in the presentation “Madrid Protocol,” which is also available on INTA’s website.

13. Obtaining Trademark Rights (cont’d)
Rights are obtained:
- By registration; or
- By use (common law rights)
In most countries, trademark rights are acquired through registration. In some countries, the first person to register has the prior rights, which can create a race to the register. In other countries, such as the United States, Canada and the United Kingdom, trademark rights are acquired through use, and so, if there is a dispute as to who is first to register rights, the trademark owner entitled to registration is the one who first used the mark.
In many countries, you can have both registered rights – those acquired through the registration process – and unregistered rights – those acquired through use. Unregistered rights often are called “common law rights.” These rights exist regardless of whether the mark is registered and continue to exist as long as the mark is used. Registration is also possible in common law countries.
Registration provides certain advantages. For instance, when you are trying to enforce your rights against third parties, it is easier to prove to a court that you own a mark if you have a registration certificate, whereas in the case of common law rights you first have to prove that you have rights in the mark before you can enforce them. Registration also provides a presumption of nationwide rights, whereas common law rights are limited to the geographic areas in which the owner operates.

14. Trademark Registration
Registrability
Meets the legal requirements – that is, not generic, not immoral, etc.
Availability
Is not identical or confusingly similar to a prior-registered mark or a mark that is the subject of a pending application (assuming that the application is ultimately accepted).
Is not being used in the same market as an identical or confusingly similar mark in connection with similar goods or services.
Application Procedure
With the national trademark office.
United States: state registration (with the secretary of state) or federal registration (with the USPTO).
Each country has its own laws relating to trademark registration. In many countries, a mark cannot be registered if it includes immoral, deceptive or scandalous subject matter or if it includes a flag or coat of arms of the country. In most countries, a mark cannot be registered if it is incapable of functioning as a trademark (i.e., if it is generic or overly descriptive). A few countries allow registration of a descriptive mark on a lesser register called the Supplemental Register or Part B, but there is a growing trend to discontinue these in favor of a single register.
Some countries refuse registration if the mark conflicts with similar marks of prior registrants for the same or similar products or services, while others do not refuse marks on this ground but instead publish the mark for opposition and allow interested parties to object if there is a perceived conflict. In the United States, for example, third parties have the opportunity to object to registration of marks. As part of the federal application procedure, the USPTO will give notice to the public of the publication of the mark, allowing interested parties to file oppositions if they determine that the applied-for mark infringes upon their rights.
In many countries, a mark will not be available for registration if it conflicts with a well-known mark, even if that well-known mark is not registered for the products or services of interest (refer to the comments on well-known marks, above).
Filing an application for trademark registration can be simple, and some countries, such as the United States, Australia, New Zealand and Brazil, allow for electronic filing. The primary requirements consist of the following: identity of the applicant; nature of the applicant (e.g., individual, company, partnership); representation of the mark; identification of the goods and/or services and their class; and payment of a filing fee. The greatest variation between countries is found in the goods and services identification. Some allow very broad statements, including even the class headings, whereas others require specificity as to the nature and function of the goods and services. Over time, there has been a growing trend to adopt the latter position. A few countries, such as the United States and Canada, require that the mark be in use prior to registration. In most other jurisdictions a registration can be granted regardless of whether the mark is in actual use. In these jurisdictions, use issues only arise later in the life of a registration, when the registration may be vulnerable to cancellation if the mark is not in use.
In the United States, a mark must be in use before it can mature into a registration (unless the owner has based its U.S. application on its foreign registration). A party can register a mark at either the state or the federal level. A federal registration carries with it the presumption of nationwide rights, plus certain other benefits exclusive to federal registrations. A state registration represents rights that are generally similar, within the state of registration, to a user’s common law rights.

15. Notice of Registration
______ is a trademark/service mark of _______ TM SM
Many countries have adopted the ® (alternatively called the R-in-a-circle, Circle-R or Encircled R, or registration symbol) as the notation used to advise the public that the mark has been registered. (Other notations, such as "Registered in the U.S. Patent and Trademark Office" or “Marca Registrada,” are also used in various countries.) In a few countries, such as China, marking is mandatory; in most, it is permissive. The registration notice can be used only with registered marks. Use of ® with any unregistered trademark may result in claims of fraud, misleading advertising or criminal penalties in some countries. Once a registration issues, it is important to use the ® symbol to place the public on notice that the mark is a registered protected intellectual property right. Failure to use the ® symbol can permit a defendant in an infringement action to argue that he/she/it did not know that the word or symbol was protected.
Instead of a notation, a “legend,” caption or footnote stating that “X is a trademark/service mark of Company A” can be used in the packaging, labels or other materials.
™ represents a claimed registered or unregistered trademark. It is an informal notification that there is a public claim as a trademark.
SM represents a claimed registered or unregistered service mark. Similar to ™, it is an informal notification that there is a public claim as a service mark.

16. Loss of Rights Improper use • Failure to police
Genericide • Failure to renew
Non-use • Cancellation
Improper assignment or licensing
Trademark rights may be lost through improper use, such as when the owner allows the mark to become the generic term for the product itself, a process known as “genericide.” Other instances in which trademark rights may be lost include:
• Non-use for an extended time, with insufficient steps taken to resume use.
Improper assignment (failure to transfer goodwill).
Improper licensing (failure to exercise quality control).
Failure to police unauthorized use of the mark or infringing marks by the media and others. Some companies use advertisements to educate the public that a certain brand is not a synonym for a product or service. Another strategy is to write letters to journalists and editors of professional publications and dictionaries and notify them that certain designations are trademarks and to advise them on the proper way to refer to a trademark.
Failure to renew or comply with registered user requirements for registrations.

17. Loss of Rights Registered rights Common law rights Failure to renew
Non-use
Failure to police
Cancellation
“Use it or lose it”
In most countries, including the United States, a trademark registration is valid for 10 years and can be renewed indefinitely through the filing of a renewal application. (In Canada, the initial registration period and subsequent renewal periods are 15 years.) Failure to properly and timely renew the registration can result in loss of rights.
In some countries, to keep a trademark registration in force, the registrant must continue to use the mark in connection with sales of the product or service covered by the mark. If the trademark owner ceases to use the mark, the mark can be considered “abandoned” or may be vulnerable to a cancellation action filed by a third party. Some countries require the applicant to file periodic affidavits attesting that the mark is in use. In other countries, renewal of the registration is granted upon simple payment of a renewal fee, and the validity of a mark may be brought into question only when you are trying to enforce your rights against others.
In some countries, such as the United States, trademark rights may also be lost through improper use, such as when the mark becomes the generic term for the product itself. Another example of trademark loss of rights occurs when the owner fails to properly police third parties’ use of the mark, which can become widely used and therefore diluted. Trademark registrations can also be cancelled by the request of interested third parties when the registration violates legal requirements or, in some cases, when it can be shown that the registrant acted in bad faith in registering the mark in the first place. Other instances in which registered trademark rights may be lost include improper licensing (failure to exercise quality control) and improper assignment (failure to transfer goodwill).
With common law rights – those obtained only by use – the maxim “Use it or lose it” applies. If a common law mark has not been used for some time, the rights associated with that mark can be lost forever.

18. Proper Use — Avoiding Genericide
Once a trademark, not always a trademark
Important to
police third
parties’
unauthorized
and/or
improper
use
escalator
dry ice
cellophane
aspirin
linoleum
Proper use of a trademark is essential for its continued protection. Companies must properly use their trademarks to aid the consumers who depend upon the marks and to prevent the marks from becoming generic. If a trademark is used properly, it will remain the exclusive property of its owner. If, however, the consuming public begins to treat a trademark as the name of the product, it will no longer “identify” and “distinguish” the goods or services of one company. Frequently, it is the company’s own advertising and labeling that transform the trademark into a generic term – and this is avoidable if the necessary education and training have been provided within the company. This transformation of the mark into a generic term is referred to as “genericide.” Examples of former trademarks that started as strong, fanciful or arbitrary marks but that lost their trademark significance include aspirin, cellophane, celluloid, escalator, linoleum and dry ice. Note that in some countries, such as the United States, marks that become generic lose their registered trademark status. Caution should, therefore, be exercised, as some of these terms may still function as a trademark in other jurisdictions. (For example, ASPIRIN, although no longer a registered trademark in the United States, is still registered in Canada and in Brazil, where it even holds the status of a “well-known” mark.)
To prevent genericide, policing of your trademarks is essential – both outside your company and within it.
One of the ways to police your rights is to ensure that trademarks are used correctly.

19. Proper Use — Avoiding Genericide
Use the ® symbol where appropriate
Distinguish from surrounding text by using:
Quotation marks – “Mercedes-Benz” cars
Larger-sized print – Mercedes-Benz cars
All capital letters – MERCEDES-BENZ cars
Initial capitals – Mercedes-Benz cars
Distinctive print – Mercedes-Benz cars
Color – Mercedes-Benz cars
Use the TM/SM symbol where appropriate
On this slide are some suggested guidelines for the proper use of trademarks. Use of these guidelines can help trademark owners to avoid genericide. It is also important to police against the improper use of marks by the media and others. Some companies use advertisements to educate the public that a certain brand is not a synonym for a product or service. Another strategy is to write letters to journalists and editors of professional publications and dictionaries and notify them that certain designations are trademarks and to advise them on the proper way to refer to a trademark. And remember that you need to educate everyone within your company about the importance of the company’s trademarks and how to use them. For more detailed information on genericide and how to avoid it, please refer to the “Trademark Proper Use” presentation.
A ™ or ℠ symbol puts others on notice that the user is asserting trademark rights and the mark is not a generic term.

20. Proper Use — Avoiding Genericide
Use the mark followed by a noun.
Incorrect: A KLEENEX
Correct: A KLEENEX tissue
Do not pluralize a mark.
Incorrect: Two DELLS
Correct: Two DELL computers
Do not make a mark possessive.
Incorrect: POST-IT’s quality
Correct: POST-IT note pads’ quality
Do not use a mark as a verb.
Incorrect: Xerox a document
Correct: Photocopy a document on a XEROX copier
Use consistent, proper spelling.
Incorrect: H and M Correct: H&M

21. Policing and Protecting Trademarks
Subscribe to watch services
Internet searches
Internal “eyes and ears”
Policing consists of monitoring the use of a mark by third parties in the marketplace in order to avoid unauthorized use of the mark by other parties, improper use that may cause genericide, the use by competitors of similar marks that can cause confusion in the marketplace, dilution of the mark, etc.
Watch services are useful tools in policing a trademark. The scope of a search report may be limited to trademark registers (the subscriber is notified whenever a potentially problematic mark is published for opposition), or it can extend to common law references where one or more databases, such as trade name registers, telephone directories, business name databases, domain name registers, social networking sites, etc., are consulted. Watch services can be limited to a given geographical area and to categories of goods and services.
It also may be helpful to use Internet search engines to monitor use of a trademark.
Within your company, often the best way to police a mark is to use your sales/distribution force as the “eyes and ears” of the company and to have a reporting procedure whereby, if any seemingly unauthorized use of your mark is observed, it is brought to the attention of senior management or the legal team very quickly, so that action can be taken. Implementing such programs within your company is not necessarily expensive and can easily pay for itself over time.

22. Summary Just one of several types of IP
Not necessarily a trade / business name
Rights obtained via registration/use
Select a strong trademark
Search
Register
Properly use, police and protect
We hope that this has provided a helpful overview of what trademarks are; the basics of selecting, registering and protecting them; and how important they are to every kind of business. These bulleted items list the key takeaways.
Trademarks are just one of the intellectual property rights that can be protected. There are others that may be critical in your business.
Trademarks are not necessarily trade names or business names – they are marks to identify and distinguish your product or service from those of anyone else. They can be obtained by registration or by use.
Selecting a trademark isn't as straightforward as it might look – they can be fanciful, arbitrary, suggestive or descriptive, with fanciful and arbitrary marks being the strongest.
Searching is vital to ensure that you can properly enforce your rights in your trademark once you have them, and to be sure you do not inadvertently adopt a mark that belongs to someone else. Remember that trademark rights are territorial, so it might be advisable to search and then register your mark in every country where you will sell, manufacture, distribute or license your product or service.
Registration is a country-specific process (apart from CTMs, a few regional options and the Madrid system). To be registrable, trademarks have to meet local legal requirements and not infringe anyone else’s rights.
In the United States, there are benefits to registering a trademark, but keep in mind that federal law imposes certain requirements regarding what can be registered (marks that are merely descriptive, surnames, etc., cannot be registered without proof that they have become distinctive). Also, remember that trademark rights are territorial, so it might be advisable to search and register in every country where you will sell, manufacture, distribute or license your product or service.
It is vital to take steps to keep your rights and not lose them through genericide. We have seen some tips on how to use trademarks properly. Proper policing of your marks also will help protect the company’s most valuable assets.