"Aspirin," "thermos," "cellophane," "shredded wheat," "nylon," and "zipper" are examples of the greatest danger facing a trademark holder. Each was once a registered but, unfortunately, poorly protected trademark. Public misuse caused the trademark name to degenerate to a generic term describing the class or nature of an article. Subsequently, the holder was denied the renewal of trademark rights, and the product name became simply a generic term for competitors' products.
To avoid such a disaster, a company or individual holding trademark rights should take the following precautions:
* Make sure the mark being used isn't already in use. Protect interests through a trademark search conducted independently or through a professional search organization.
* Use and register the trademark in the state and federal PTO office.
* Use the trademark symbol [TM] to indicate that it is the company's selected mark.
* Once registration is complete use the (R) symbol to indicate that the trademark is officially registered.
* Consider the services of a trademark search firm to monitor the valid and unscrupulous use of the mark.
* Notify in writing anyone who is misusing a trademark.
* In all advertising, use the trademark as an adjective modifier, rather than as a noun or a verb. Xerox(R), for example, is careful to remind the public that Xerox(R) is a type of photocopier, rather than a process of duplicating a document.
Properly protected, a trademark can last indefinitely. The burden of responsibility for appropriate trademark use falls on the owner who must vigilantly ensure that the trademark is being utilized to distinguish a product from its competitors ratherthan merely identifying a type of product or service.
The key to the successful adoption of a trademark lies in the trademark search. This process ensures that a desired trademark does not infringe on another existing mark. An informal search can be performed independently and is particularly useful when screening suggestions for trademarks. Searches are generally conducted through computer subscriber databases such as Compu-Mark, Dialog or IntelliGate, using a personal computer, modem and printer.
At a cost of between $5 and $10 per search, an individual may uncover duplicate, conflicting trademarks. A search may also be conducted in a state patent and trademark depository library using Cassis, the free government on-line system. Finally, a search may be made in the library used by the PTO. This facility is located on the second floor of the South Tower Building, 2900 Crystal Dr., Arlington, VA 22202. Note: while these libraries have CD-ROMs containing a database of both registered an pending trademarks, in written descriptions, they do not contain the graphics of the actual design marks.
While the informal, independent search described above is a sound preliminary step, it is critical to ensure that the search process has been comprehensive. A successful challenge to the use of a trademark can result in staggering damages, legal costs and loss of profits by the party found guilty of infringement. This financial devastation could be compounded by the expense of removing the offending trademark from all advertising materials, labels and packaging, printed corporate stationary, checks, price lists, catalogues, and any other place in which the mark is displayed.
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