TM is for TrademarksIn the world of intellectual property, the precise use of language is important, whether preparing a copyright, trademark, or patent application, drafting an assignment or license agreement, or in oral communication.  In a short article on the subject, Daniel Kegan, wrote in the newsletter of the Illinois State Bar Association, “Many people, journalists, and judges use language loosely, contributing confusion rather than precise precedent and clear communication. Prominent are the malapropisms of intellectual property: confusion among patent, trademark, and copyright; confusion between the intellectual property right and a government registration.”  Kegan then makes the following simple point: “Copyright is a noun, trademark is an adjective.”  Here’s what he means.

Copyright under the United States Copyright Act automatically exists in “original works of authorship fixed in any tangible medium of expression” (§ 102).  Hence, registration is not a prerequisite to copyright protection.  A copyright owner may apply to register a copyright and received the attendant benefits but he or she does not “copyright” an original work; that happens automatically.  Copyright consists of a bundle of rights and the Copyright Act itself defines a “Copyright Owner” as the owner of “particular right.” (§ 101).  In this sense “copyright” is a noun, used to identify a right of ownership; it is not a verb.

A trademark, on the other hand, is not a noun but an adjective, modifying a noun or a pronoun.  Trademark rights in the United States are obtained by public use of a word, phrase, design, sound, or smell to uniquely identify the source of a good or service. 15 USC §§1114, 1125 (Lanham Act §§ 32, 43).  Trademark owners may register their trademarks with the United States Patent and Trademark Office or a similar state office, or both.  Trademark usage should conform to a set of rules and this is where good grammar is a must.  One should use a trademark as a brand name in combination with the common or generic name for a specific product.  For example, COKE beverage, IPOD music player, or WINDOWS operating system.  Why is this important?  Well, begin using your trademark as a verb (e.g., to XEROX) or a noun (e.g., YO-YO) and over time the public may do the same.  The brand then begins to identify not the source of the good or service but, generically, the good or service itself.  Generic terms cannot act as trademarks.  CELLOPHANE and ESCALATOR are two examples of trademarks, which have become genericized and no longer act as trademarks.  The International Trademark Association has a set of rules for trademark usage:

·    NEVER use a trademark as a noun. Use the trademark only as a brand name in combination with the common or generic name for a specific product. Always use a trademark as an adjective modifying a noun (e.g., “Xerox copier” where “Xerox” is the brand name and “copier” is the generic product name).

·    NEVER modify a trademark to the plural form. Instead, change the generic word from singular to plural (e.g., a “Xerox copy”, not a “Xerox”).

·    NEVER modify a trademark from its possessive form, or make a trademark possessive. Always use it the form it has been registered in (e.g., not “Xerox’s copiers’).

·    NEVER use a trademark as a verb. Trademarks are products or services, never actions (e.g., not “to Xerox”).

In his article, Kegan makes the point that informal usage of trademarks is relatively harmless so long as the public is aware that the COKE they order, or the XEROX they make are registered trademarks.

Public awareness, however, starts with the trademark owner who should enforce and reinforce correct grammatical usage.  Make sure to use the product’s generic name with the trademark; make the trademark stand out from surrounding text so consumers may easily distinguish between trademark terms and generic product names or descriptive text in product labels or in advertising; use a trademark notice; and avoid using variations of a mark; otherwise, the consuming public may believe improper usage is okay. For more information, we recommend visiting The International Trademark Association web site, which provides many examples of proper and improper trademark usage.

–Adam G. Garson, Esq.