A recent decision by the Trademark Trial and Appeal Board (TTAB) serves as a reminder that you must be careful how you use your trademarks in order to protect them.
The TTAB agreed with the US Patent and Trademark Office’s refusal to register a cartoonish image of a llama as a trademark for video-game software because the llama design fails to “function as a trademark.”
The trademark examiner claimed that the llama is merely a character in the game, but the applicant disagreed, arguing that the llama isn’t a character because it doesn’t speak, move, or interact with players; nor does it have a personality.
In its decision, the TTAB points out that a proposed trademark is “registrable only if it functions as an identifier of the source of the applicant’s goods or services,” and ruled that the llama does not do so.
Noting that the llama appears in a variety of sizes and portions, and further, that in some places, the colors of the llama are more vivid than others, the TTAB stated that this variety “detracts from” the applicant’s claim that consumers would recognize the llama version it sought to register as an indicator of source.
In other words, the llama did not actually function as a trademark, so it could not be registered as a trademark.
How can you help ensure that the words, phrases, or logos you believe are your trademarks actually do serve as trademarks?
If the mark is federally registered, you can—and should—use the ® symbol each time you use the mark. If the mark isn’t registered with the US Patent and Trademark Office, you should use TM or SM so people know you’re asserting trademark rights.
Use your mark consistently. Always spell or represent your mark correctly and avoid variations. If your mark is a singular term, don’t ever make it plural, and—despite Google’s current success in protecting its mark—never use your mark as a verb.
Your trademark should always be used in a distinctive manner that sets it apart from the surrounding words, such as by using capital letters, quotation marks, italics or distinctive coloring.
It’s also a good idea to use a generic term for the product or service along with your mark. For example, if you sell socks under the mark TEAL FOX, use both terms to describe your product, that is, “TEAL FOX socks.” In other words, use your mark as an adjective along with a noun.
Be sure to provide licensees, affiliates, dealers, and the like with written “brand guidelines” describing the appropriate use of your mark, and if you find any improper uses of your mark in the media or elsewhere, swiftly address it. You should send letters or emails with information on how the mark should be used. Make sure you keep copies of those communications as well as all responses.
You’ll also need to promptly address any infringements of your mark, or the infringer may be permitted to continue using your mark.
Finally, you should federally register your trademark and file all required maintenance documents, as well as those that are beneficial but not required, such as the Section 15 declaration of incontestability.
Please feel free to contact us if you have any questions about trademark law or if you need assistance with choosing, protecting, or enforcing your marks.
Photo by Yuvy Dhaliah on Unsplash
