Marketing Appeal versus The Law

The display of trademarks causes a tension between legal requirements and marketing priorities. It often requires a delicate balancing of trademark notices and visual appearance considerations.

Although there are no requirements at common law or under the Trademarks Act regarding trademark notification and identification, certain customary rules and codes of practice have evolved to ensure that a trademark is identified as such, that the trademark owner is identified, that the trademark is properly and consistently used, that any licensing arrangement is disclosed, and that the trademark complies with applicable legislation.

The TM and ® Notifications

Registered trademarks are identified with ® and unregistered trademarks are identified with TM.

This can be varied if, for example, the advertising or packaging is to be used in the Province of Québec. The usual bilingual form utilized is “TM/MC” (Trademark/Marque de Commerce) for an unregistered mark and “TM/MD” (Trademark/Marque Deposée) for a registered mark. Some national brands use both ® and an E (for “Enrigistrée”) or ®/MD.

Whether any of these symbols are displayed depends on the owner’s preference, the visual media used and the overall impression to be created. Sometimes an asterisk is shown to avoid text clutter with a simple or stylized logo. The asterisk puts the reader on notice and refers to a license text, caution statement or other legal disclaimer, usually in print size that only a mouse could read.

In Canada, the use of trademark notices is not mandatory, however their display is a fundamental means of protecting the legal enforcement rights associated with the brand at very little expense.

Use It or Lose It

Judge-made rules have also developed over the centuries in relation to the proper use of trademarks. They should always be used in their registered and original form. Re-arrangements or variations tend to weaken the trademark, hurting its distinctiveness. Every significant deviation from the mark “as registered” should be protected as a new trademark with separate registration.

If a trademark is not used properly, it may become generic and lose its original distinctiveness (e.g. Escalator, Linoleum, Kerosene). One should always follow the trademark with the actual product or service with which it is associated (e.g. a Kleenex tissue).

Some Essential Rules of Trademark Use

Trademark usage and brand guidelines typically include the following 8 cardinal rules:

(a)             Always use your trademark as an adjective, not as a noun or verb.

(b)             Never use your trademarks in the plural or possessive form.

(c)             Use your marks only in connection with their claimed product or service.

(d)             Use the ™ symbol on your mark or the ® symbol if your trademark is registered.

(e)             Use distinctive type or font to differentiate your trademark from surrounding text.

(f)              Never abbreviate or alter the spacing of your word mark.

(g)             Never change the spelling, type form, or graphic elements of your trademark.

(h)             Include trademark notices when using trademarks in advertising and packaging.

Alternatively, the International Trademark Association has a simpler 4-part ACID mnemonic:

A.        Adjective: Use it only as an adjective.

C.        Consistent: Use it consistently.

I.          Identification: Identify it as a trademark.

D.        Distinctive: Always display it so that it stands out.

These “best practices” for trademark use are not carved in stone, nor exhaustive, and vary from product to product or service to service, especially where licensing or franchising occurs.

Each brand protection strategy and trademark usage policy should be customized to its own industry practices and commercial circumstances.

Trademark Licensing

If the trademark is advertised under a license or a franchise, notice of the licensed trademark use must be given for the brand owner to claim the legal benefits of such use. This is typically accomplished using an asterisk or other symbol next to the mark, referencing the reader to that licensing statement elsewhere on the packaging or in print advertising.

There are many federal and provincial regulatory restrictions affecting advertising and packaging, but traditional trademark usage is left up to the owner’s diligence. As such, to properly use your trademarks and protect your brands, you should apply and follow these basic do’s and don’ts.