Welcome to issue number two of smar(tm)arkSM, the monthly newsletter from Erik M. Pelton & Associates about protecting, enhancing, and leveraging your brand.  Notice how there is now an “SM” on the right shoulder of the newsletter name.  The “SM” is used because the newsletter name is a brand name, it is used to market and promote the firm, and we have filed to register it as a trademark. (Yes, we practice what we preach!)  For more information about trademark symbols – TM, SM and ® – see below.

Trademark Tip: Proper Trademark Usage

Following a few basic guidelines for proper usage of trademarks can improve your legal protections and add value to the brand by reinforcing to customers that the mark identifies you and only you.  Here are a few quick tips on proper use of a trademark:

Do not use it as a verb. Despite the wishes of Microsoft’s CEO (see here), generic use a trademark diminishes its value and may harm its legal protections. While it can be flattering when others refer to your brand as the entire category of a product or service, educate your customers, vendors, and partners about how to properly use your trademarks. A person cannot Xerox® papers, they make a copies using a Xerox® device. Linoleum, Escalator, and Asprin used to be registered trademarks, but were cancelled when they became generic names. For a fascinating list of generic trademarks and more in jeopardy of becoming generic, see here.  Google® fights back against people using its brand name to be synonymous with ‘searching’ on the internet.

Make it stand out.  Make sure everyone knows that you are using a trademark – put brand names and slogans in bold type, italics, different font, or otherwise make them stand apart from the rest of the copy on your website and materials. This reinforces that the highlighted text is special, is your brand, and has value. And it helps add to your protection by showing the public that it is not just any wording, it is protected trademark wording.

Use the correct symbols!  The ® is for federally registered trademarks. (TIP: on a full keyboard you can generate the symbol by holding down the “ALT” key and 1,7,4 on the number pad.) Technically, the circle-R should only be used for goods or services which a USPTO registration covers.  If a registration covers tires, but the brand name is also used on headlights, the packaging for the headlights should not use the symbol (and perhaps a new registration should be obtained to cover headlights).

The TM (trademark) or SM (service mark) symbols may be used by anyone who claims rights in a mark, whether or not they have filed an application with the USPTO. This claim may not be valid, but asserts that the owner is claiming or seeking some trademark protection in the word, logo, or slogan. TM is properly used in connection with physical goods (computers, coffee beans, eyeglasses, etc.), but SM is properly used in connection with the provision of services (website, consulting, retail store services, real estate agent, etc.)

Where are the symbols used?  Generally the proper symbol should be used on the upper right ‘shoulder’ of the relevant text.  For a logo, placement on the upper right or lower right corner is generally accepted use.

When are the symbols used? Use them often.  You do not need to use them every time your trademarks are used, but you should use them frequently, especially on the most visible uses of your trademarks, letterhead, first website page or top of website pages, business cards, etc.

Trademarks in the News:

Maker’s Mark Wax Seal

Traditionally, trademarks are brand names, logos, and slogans.  But they can also be shapes (Coke bottle), colors (pink for insulation, purple for sandpaper, and more), sounds (NBC chimes), patterns (Burberry fabric, Yankee pinstripes), and more. A trademark can be anything that distinguishes your brand from the competition.

A recent opinion by the United States District Court of the Western District of Kentucky ruled that the red dripping wax seal used to bottle Maker’s Mark bourbon is a protected trademark. The court issued an injunction barring Cuervo from use of similar red dripping wax on its spirits.  “The court considers the red dripping wax seal inherently distinctive, because it is a unique mark used in an unusual way to draw in the consumer,” Judge Heyburn wrote.

The judge got the decision correct in my opinion.  Anything unique to promote and distinguish your brand in the eyes of the consumer may be protectable as long as it is not just a functional part of the product. Consumers familiar with Maker’s Mark, upon walking into a bar and seeing a bottle on the shelf topped with dripped red wax, would be likely to presume that the product came from or is related to Maker’s Mark.

The red dripping wax configuration has been registered to the parent company of Maker’s Mark since 1985 with the following description of the trademark: the mark consists of a wax-like coating covering the cap of the bottle and trickling down the neck of the bottle in a freeform irregular pattern.  They also have separately registered the color red as applied to the seal on the bottle neck. Note that it appears from the ruling that Cuervo may use a dripping wax seal so long as it is not red; or at least that issue was not decided in this case.

Many bottle shapes are also protected trademarks.  Can you match the registered trademark shape with the brand?


a)b) c)

d) e) f) g)

What makes your brand distinct?  Is each distinction protected to provide your brand maximum protection and value?

Firm News

Yet another sign that the economy is on the rise: clients are investing in growing and protecting their brands. Through the first 3 months of 2009, we filed 26 applications on behalf of clients. This year, new applications more than tripled (83) during the same period.

Did You Know?

In Fiscal Year 2009, more than 350,000 trademark applications were filed in the US Patent and Trademark Office.  If you created a new brand in 2009 – a product name, service name, slogan, logo, newsletter, website, or blog title – were you among them?

a) Perrier; b) Evian; c) Absolut; d) Gatorade; e) Tropicana; f) Coca-Cola; g) Patron

Thank You
Thank you for reading our newsletter.  We truly enjoy spreading the message about trademark protection to businesses across the USA. It gives us great pride to help businesses thrive with strong brands.  If you are involved in any trade associations or other groups that would benefit from a presentation featuring information about creating, protecting, and leveraging strong brands, please let us know.

This publication has been prepared for the general information of clients and friends of the firm. It is not intended to provide legal advice with respect to any specific matter. Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.

© 2010 Erik M. Pelton & Associates, PLLC.

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