PROTECTING YOUR COMPANY'S TRADEMARKS AND COPYRIGHTS
GENERAL TRADEMARK GUIDELINES
A company’s trademarks, including a corporate logo, can be every bit as valuable a corporate asset as more tangible items such as equipment and real estate. Through repeated consistent use of a distinctive identifying word or symbol in connection with its products and services, a company can establish a reputation for high quality and superiority of such products and services. Many trademarks have risen to the level of being household words: COCA-COLA, XEROX and KODAK, to name a few. The recognition value associated with each of these words permits its owner to establish a significant foothold in any new market that it chooses to enter. The strength of these marks is due to a long history of consistent usage of the mark, consistent presentation to the public and continual policing against unauthorized appropriation.
Trademarks are adjectives, and as such, they should always modify a noun, which is the common name of the product to which the trademark applies. For example, it is proper to say that “I own a XEROX color copier,” but it is incorrect to say that “I own a XEROX.” Owners of trademarks who consistently fail to follow and enforce this rule run the risk of a mark becoming generic and losing its protection as a trademark. In fact “aspirin” was once a registered trademark until it became increasingly disassociated with its noun, acetylsalicylic acid. Whenever possible, then, insert a generic name of the associated product (e.g., film, software, tissues, etc.) immediately after the trademark. The following additional guidelines should be considered:
a. Give notice that the mark is registered by displaying with the mark the words “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the letter “R” enclosed within a circle, thus ®. Such action may be deferred until new brochures or advertising is prepared, as the case may be. However, damages for infringement of a mark are contingent upon use of the registration notice or upon giving actual notice of the registration to the infringer. The preferred practice is to add the registration notice fairly promptly.
b. Use caution in combining trademarks. For instance, a reference to “JEEP® GRAND CHEROKEE®” could imply that Grand Cherokee is also associated with brands other than Jeep, undermining the strength of the mark GRAND CHEROKEE. Let each mark achieve its fullest commercial impact independently.
c. Do not hyphenate, abbreviate or make possessives of trademarks.
d. At a prominent location in each advertisement, user manual, etc., insert a credit line: “[name(s) of marks] is/are trademarks of [owner].” Commonly, these notices are placed at the end of the text for materials not having a title page and on the back of the title page for documents having a title page.
e. Use trademarks exactly as registered. In some cases, a deviation in use of a mark (such as a different style of type, color or logo) or an extension of the mark to other goods or services requires a new application.
Further, it is critical that an owner/registrant keep the Trademark Office apprised of the owner’s current address because it may attempt to notify the registrant directly of the filing of any petitions for cancellation of the registration by mailing the notice of the petition to the registrant’s last known address. If the Trademark Office does not have the registrant’s current address, it is possible that the registration could be cancelled without the registrant’s knowledge.
Use and Policing of a Trademark
A mark must be used to preserve trademark rights and to avoid abandonment. Under U.S. trademark law, a mark is deemed abandoned when its use has been discontinued with the intent not to resume its use. An intent not to resume use may be inferred from the circumstances of the non-use; however, in some situations, non-use can be excused. U.S. trademark law provides that non-use for three consecutive years is prima facie evidence of abandonment.
Ownership of a trademark carries with it the obligation to police the mark. Thousands of applications are filed each year in the U.S. Trademark Office and then published for opposition by the public. Watching services give early warning of possible infringers and allow the filing of timely oppositions to the registration of marks that would conflict with your registered mark. Additionally, employees should be alert to the use of any confusingly similar mark so that prompt action can be taken to address potential infringement. The distinctiveness and strength of the mark can be diminished if action against infringers or users of similar marks is not taken.
GENERAL COPYRIGHT GUIDELINES
A copyright provides a lengthy term of protection. Corporate-owned works are protectible for 95 years from the date of first publication or 120 years from the year of its creation, whichever expires first. Individually-owned works are covered for the life of the author plus 70 years.
Since March 1989, a copyright notice is no longer required. However, use of the notice entitles a copyright owner to additional protection under the Copyright Act, particularly in the event of litigation should a defendant assert a defense of innocent infringement. To obtain maximum benefit from your registrations, an appropriate copyright notice should be used, consisting of three elements: the word “copyright” or the symbol ©; the year in which the work was first published (i.e., created or distributed); and the name of the copyright owner. It is also advisable, although not required, to add the phrase “All Rights Reserved” beneath the notice to secure maximum protection internationally. Accordingly, the copyright notice should read:
Copyright (or ©) [year] [owner]
All Rights Reserved
Modification of Copyright Registration and Third-Party Interests
A supplementary copyright registration may be made either to correct or amplify information given in the original application, such as the addition of authors or claimants, address corrections and change of title of the work. Note, however, that supplemental registrations are not appropriate to change the content of a work. In such an event, depending on the nature of the changes made, a new application may be warranted. Additionally, any licensing of copyrights to third parties should be carefully documented in writing, and assignments or grants of security interests in the copyrights should be recorded with the Copyright Office.
Policing of Copyrights
Copyright registration is a prerequisite for any action for infringement involving works of U.S. origin. Employees should be notified of the registered work and remain alert to the distribution of any potentially infringing work so that prompt action can be taken. Generally, two elements must be proven in a claim of infringement: (1) ownership of a valid copyright in each work alleged to be infringed; and (2) “copying” of the work (or a violation of another of the exclusive rights of a copyright owner under the Copyright Act, such as the right to distribute, perform or display a work). Copying is generally proven by showing that the defendant had access to the copyrighted work and that the copy is substantially similar to that work.