Trademarks (and service marks) identify the source of products and services, while trade names are short hand references to businesses. Some company names are, indeed, used as trademarks; that is, they identify the product or service of the owners.  Two that come to mind are Coca-cola® and Microsoft®.  Proper trademark usage requires placing your mark on the product itself, on a label, packaging, or on other materials shipped with the product.  But what are the implications of placing your trademark on items that are not associated with the product or service that they identify?  And if you do so, and your trademark rights are challenged, will those items serve as evidence of trademark usage?

The Trademark Trial and Appeal Board addressed this issue in a 2008 case, 200 Kelsey Associates, LLC v. Delan Enterprises Inc. in which the parties argued over whether the registrant, Delan, had abandoned the use of the JONATHAN LOGAN mark used to identified women’s dresses and other clothing items.  As evidence that it had not abandoned the mark, Delan presented the Board with advertisements, correspondence, invoices, purchase orders, computer printouts all bearing the words “Jonathan Logan.”  In each instance, the Board wrote that the evidence demonstrated that Jonathan Logan was being used as a trade name, not a trademark:  The Board observed that “there was no evidence on behalf of respondents regarding the practice of placing the JONATHAN LOGAN trademark on every item of clothing sold by the “Jonathan Logan” company.”  As a consequence, the Board determined that Delan had abandoned its trademark.

In other words, the trademark was being used to identify the business and not the products designated by its federal registration.  The case teaches us that trademarks must be used in connection with the products they identify. Otherwise, your trademarks will not receive the protection of federal registration.

Adam G. Garson, Esq.