"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
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
* Use the trademark symbol [TM] to indicate that it is the company's
* 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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