Trademark Usage Guide

A trademark can become too successful and become generic or synonymous with a type of product or service.  Once a mark becomes generic anyone can use it.  This is because the trademark no longer indicates to the general public or consumers of the products or services in question that the products or services were made by the trademark owner.  That is a key requirement of a trademark—it must distinguish your products and services from your competitors.  In addition to building and maintaining your inventory of registered or unregistered brands, it is also very important to ensure that you on an ongoing basis mark and use them properly to maintain your investment by avoiding.  ESCALATOR, KEROSENE, CORN FLAKES, LINOLEUM, and SHREDDED WHEAT are all examples of trademarks that have been lost by their original owners because they became generic terms through general or improper use or enforcement of their trademark rights.

The following guidelines will help to ensure that your trademarks will avoid becoming generic, so that the rights in the name are maintained for your benefit.  These guidelines apply to advertising, product literature, business documents and correspondence, packaging and labels and any other place where the trademarks are used.

1. Trademarks are not Verbs

If you use your trademark as a verb, you risk your trademark becoming generically descriptive of the activity to which it refers. For example:

Right: “Send this package out by FEDEX courier”

Wrong: “FEDEX this package”

Right: “Make six copies for me on the XEROX copier”

Wrong: “XEROX six copies of this for me”

Right: “Please use TURTLEWAX”

Wrong: “TURTLEWAX my car”

2. Do not Pluralize a Trademark

Trademarks are adjectives which describe nouns, they should not be used in plural form.  Rather than pluralizing the trademark, the nouns which they describe should be pluralized.

Right: “Two MOLSON CANADIAN beers”

Wrong: “Two MOLSON CANADIANS”

In the case of trademarks which end in an “S”, the treatment should be no different. The mark should not be adapted to imply the singular tense by removing the “s”. For example:

Right: “A BAGGIES plastic bag”

Wrong: “A BAGGIE”

3. Trademarks and Trade Names are not the same

Trade names are names that identity an organization, whereas trademarks identify a product and/or service. While some trademarks are trade names, for example, COCA-COLA®, other trademarks bear no similarity to the owners trade name, for example, SUBARU® which is owned by Fuji Heavy Industries, Ltd.  Trade names are proper nouns which can be used in the form of a possessive and do not require a generic modifier, and should not be marked with a trademark symbol. For example:

Corporate Name:        “These shirts are made by Tommy Hilfiger Ltd.”

Trade Name:   “These shirts are made by Tommy Hilfiger”

Trade Name:   “Tommy Hilfiger’s newest jeans are for women”

Trademark:     “Are those TOMMY HILFIGER jeans?”

4. Trademarks Should Not be Used in a Possessive Form

Trademarks should never be used in a possessive way, such as by adding “ ‘s”, unless the trademark itself is a possessive mark, such as “WENDY’S restaurants”, “LEVI’S jeans” or “PEAR’S shampoo”. Trade names, unlike trademarks, can be used in a possessive sense.

5.  Avoid Generic Use – Trademarks are Proper Adjectives

Properly displaying your trademarks will distinguish your mark from the generic language with which they are used. For example, trademarks should either be used with Initial Caps, used with “Initial Caps” with quotes, or optimally CAPITALIZED COMPLETELY.  Generic terms should always appear after the trademark – e.g. “LITTLE CAESAR’S pizza”.  At the very least the generic term should be used after the trademark at least once in each written communication and where possible or appropriate also in all broadcast matter. Preferably this should be the first time the mark appears. Some examples of this are:

  • FORD car;
  • “Kleenex” tissues;
  • DELL computer; or
  • Kodak film.

Additional emphasis can be placed on trademarks by using the word “brand” after the mark – example, “SCOTCH Brand transparent tape”. Proper marking, discussed below, should also be considered.

6. Show People That Your Mark is Important to You

While there are no marking requirements in Canada, additional emphasis can be placed on trademarks by using one of the universally acceptable symbols or methods of indicating trademark status.  Some companies make the proper marking of their trademark status a requirement for each trademark on each piece of advertising material, packaging or other communication using their marks. Some of the marking methods are as follows:

  • ™ can be used for both registered and unregistered marks.
  • ® can also be used for registered trademarks, but this mark cannot appear on any products or on any marketing material for products and/or services in other jurisdictions unless it is also registered there.