For proper trademark use, remember the ACID test:
Adjective - the trademark acts like an adjective modifying the product/service (noun)
Consistent - trademark use should be clear with every use of the mark
Identify-use as a trademark with symbol
Distinct - from surrounding text. Set off with capital letter, bold,italic etc.
The ACID test is a good way to remember how to properly use your trademarks. Failure to properly use a trademark can cause the trademark to become invalid or generic opening its use to others.
Using the mark as an adjective seems to be the hardest part of the test for most trademark owners. The temptation is to use it as a noun. For example, you might see advertisements that say things like "Our Nutbuster is on sale now." The trademark should always modify its good or service. A proper use as an adjective would read:
"Our Nutbuster® impact wrench is on sale now."
The same is true for services:
"Learn more about Orange™ accounting services on our website."
The most common question that I get is how to Identify the trademark, do I use a TM or a circle R. The TM can be used with any trademark use. The circle R symbol may only be used once a mark is registered. Therefore, when in doubt, use the TM.
Distinctiveness is related to identity in that you want to make sure the trademark stands out as a trademark. Marking with the appropriate symbol immediately creates distinction. Other devices can be as simple as capitalizing the first letter of each word of a word mark or logo to ensure they pop from the rest of the text that a consumer is viewing. Color, font style and anything else that creates distinctiveness can also be employed.
Now at this point, you may be saying to yourself, what about the C in the ACID test. Well consistency is the glue that holds everything together. Doing all of the other parts of the ACID test over and over is vital to ensuring that consumers and more importantly a trademark office or court recognize the use of the mark as a source identifier. Trademark applicants often get tripped up because the mark appears everywhere without distinction, without proper marking and without modifying the goods and services in the text of a website, an advertisement or description of goods and services. Anyone of these things may cause an examiner to refuse to register a mark or a court to find a mark invalid. This can be devastating when attempting to keep others from using your IP.
One of the most common areas for inconsistency is in websites or product/service descriptions where the mark is used in sentences or paragraphs describing the goods or services. The mark may appear at the top of the page capitalized or otherwise set off but without modifying the goods/services. Then in the description the mark is not set off with capitalization or a symbol. An examiner looking at this inconsistent use may conclude that the mark is not really being used as a trademark and is merely a descriptor. In these instances, the examiner will refuse registration on the basis that the mark is not capable of identifying the applicant as the source of the goods or services.
On your daily commute, see how many good and bad examples of trademark use you can find.
