You have picked a strong trademark, had it searched and filed your intent to use application.  All went well and you have a trademark registration.  You have created your trademark usage manual. The marketing department has been advised to follow those guidelines and to use the ® symbol next to the mark in advertising.  You are doing everything right.

Is it time to just kick back and build brand equity?  No.

There are still a few additional issues you need to pay attention to.  One of these issues is maintenance of your trademark registration.  A trademark registration does not continue indefinitely.  It requires tending.

Declaration of Continued Use

A declaration of continued use (under § 8 of the Lanham Act) must be filed during the year preceding the 6^th anniversary of the registration date. The declaration can also be filed within a 6 month grace period, upon payment of an additional fee.  It is also necessary to file a current specimen showing use of the mark.

We have talked about why it is important to use your trademark consistently.  The easiest way to be sure that everyone in your organization knows the proper way to use the company’s trademarks is to create and distribute a trademark usage manual.  The trademark usage manual should also include easy to follow guidelines setting out that the mark is to be used as an adjective and not a noun. The usage manual does not need to be a complex or confusing document.  It should be a straightforward listing of the acceptable ways that the company’s trademark should be used.  For example:

1) Where color is an option the, Ô   logo is to be printed in “PANTONE® Classic Blue 19-4052 TPX.”  The wordmark FLOWER POWER is to be printed in “Pantone® Virtual Pink 18-1856 TPX.”

In our companion post today, we are talking about the importance of using your trademarks in a consistent manner.  This consistency helps consumers know that when they see KalmKap,that it identifies a product coming from a single company and that they can trust that the quality is the same as the last time they bought the product. Consistent use helps to identify your mark as being owned by you. Another way to identify your marks as yours is to use the recognized trademark symbols and to make appropriate attribution statements somewhere within your ads.

Failure to use trademark symbols won’t result in a loss of trademark rights, but using these symbols will help place competitors on notice regarding what you believe you own and that you are serious about protecting and enforcing your valuable trademark rights.

The three symbols that can be used directly with the mark are ®, TM and SM.  If a trademark is registered with the United States Trademark Office, then you can use the ® symbol.  If the mark is not registered, then you should use the TM or SM symbols. The TM symbol can be used for any mark whether in use on goods and/or services.  SM may used for marks that are specifically used for services, rather than a product.

We have discussed the need to use your trademarks as adjectives (and not nouns or verbs) to avoid having them become descriptive or even generic terms. Today, we will talk about how you should be using your trademarks in a prominent and consistent manner.

Trademarks help consumers identify and distinguish your goods or services from those of your competitor. You should be using your marks in a way that builds “brand awareness” so that consumers will see your mark and immediately think of your company.  If the appearance of your trademark is different every time a consumer sees it, it will take longer to build up a good, strong association between the mark and your goods and services. And, with less distinctive marks, inconsistent use can undermine your rights completely.

Consistent use of a mark will help strengthen your rights in that mark as well as in any registrations that you may have. Consistency in use is particularly important with descriptive or highly suggestive marks and will assist in developing secondary meaning.

Healthcare is a highly competitive market.  Healthcare companies are hiring marketing teams to lure customers to their facility.  This will invariably require making statements regarding the quality of your services and how your services are better than your competitors.  Problems will arise if these ads cause patients or their families to expect more than what is or even can be offered. There are many scenarios that could result in claims of false advertising, but today we will be looking at “puffery.”

Puffery is generally a subjective exaggeration, even blustering or boasting, upon which no reasonable consumer would rely – “Our hamburgers are the best in the world!”  Puffery often uses exaggerations so excessive that they become comical – “Our hamburgers are so good they will bring you to tears!”

Thus, non-actionable puffery will generally involve vague, highly subjective claims regarding the superiority of the service or products being sold.  However, clarifying what may be found to be mere puffery rather than an actionable false claim can be a difficult task. The result will often turn on the totality of the advertisement or even the entire advertising campaign. Ultimately, a court will focus on whether a reasonable consumer of the services would view the accused claim as stating a verifiable fact – “We have the healthiest meals anywhere!” or whether a reasonable consumer would view the comment as expressing an unverifiable opinion – “We serve our patients the tastiest meals in the city!” The first statement can perhaps be factually verified and if not true could be an actionable false claim, whereas the second claim regarding tastiness is more a matter of opinion and is more likely to be considered puffery.

In one of our first posts,  we discussed the five categories of trademarks (Generic – Descriptive – Suggestive – Arbitrary – Fanciful) and how a mark becomes more protectable as it moves across the spectrum.  Laudatory trademarks are often included in this list as “descriptive marks,” requiring a showing of secondary meaning to be protectable. However, it has been recognized that many laudatory marks do not actually describe any feature of the product it is used with; rather, they tend to suggest that the product is of high quality or “better” quality than other similar products.

Laudatory terms that may be considered suggestive include, for example, “Select,” “Plus,” “Super,” “Deluxe,” or “Gold Medal.”  These terms are not descriptive, in that they do not provide direct information regarding the product itself.  Rather, these terms are suggestive as they require the consumer to use imagination, thought and perception to connect the mark to the goods. And even then, the connection may be unclear.  Does “Deluxe” imply that the product is bigger, that it works better or is somehow more luxurious?  Perhaps the product includes additional features not present in the competitors’ products?  While the exact meaning is not clear, the mark does connote that the product named “DELUXE” is somehow superior.

However, even if suggestive, laudatory trademarks are rarely found to be protectable without a showing of secondary meaning.  Further, it is often held that, as with descriptive marks, users of suggestive laudatory marks may not be able to monopolize the right to label or name its product in such a way that suggests or implies that it is the finest product on the market. Thus, laudatory terms do not fit neatly into the usual trademark framework, leading to uncertainty regarding the protectability of laudatory marks.

This week we are discussing ways you can use a third party’s mark to identify the third party’s goods or services while advertising your own.  For example, a dental office wants to let potential patients know that it uses a specific brand of dental veneers.  The law allows XYZ Dental to factually state “XYZ Dental specializes in the fitting and application of ABC® brand veneers.”  This type of use is known as nominative fair use and as with comparative advertising and descriptive fair use, there are rules that need to be followed.

To qualify as proper nominative fair use, the use must not create a likelihood of confusion and the use cannot imply sponsorship or endorsement by the trademark owner where none exists.

The courts have set out a three part test to determine if a use is likely to fall within the rubric of nominative fair use.

1. The trademark owner’s product or service must not be readily identifiable without use of the trademark.  It is recognized that there are times when it is necessary for a company to refer to a third-party product or service by its trademark.  In those circumstances the law does not require individuals or companies to use “absurd turns of phrase” simply to avoid trademark liability.  XYZ Dental does not need to state that it fits and applies the dental veneers identified by the first three letters of the alphabet.  It can simply factually state it fits and applies ABC dental veneers.