Names To Remember

Aug/Sept 2006 – Article
American Journalism Review, August/September 2006

Names to Remember

"What's in a name? That which we call a rose by any other name would smell as sweet." Shakespeare was correct, but he was not discussing trademarks. In fact, one of the most valuable assets a company has is its name. Consumers know a company by its name and call for its products or services by names chosen by the company. Companies spend millions of dollars every year researching catchy names and slogans as well as registering them and policing their use. When you think of a product, it is likely that you associate it with its trademark – NIKE shoes or IPOD MP3 players.

A trademark or service mark ("trademark") is a word, symbol, design, or combination of words and design elements used to identify and distinguish the goods and/or services of one person or company from those of others. A trademark identifies the source or sponsorship of a product, while a service mark identifies the source or sponsorship of a service performed for the benefit of another.

One goal of marketing is to increase brand awareness and consumer recognition of a company's trademark(s). While few marks will become so famous that consumers will automatically associate the mark with the owner, the ability of consumers to ascertain the source of goods or services from the mark is of utmost importance. The owners of marks such as NIKE, PEPSI, KODAK, EBAY, TOYOTA, FORD, COKE, and KLEENEX expend considerable time and money creating associations in the minds of the consuming public between these marks and the goods or services offered under them.

A trademark should be used properly or it may lose trademark significance. If a mark is used improperly, it can become descriptive or generic for the goods or services offered under it in the minds of the purchasing public. For example, the term "Escalator" was initially a trademark, but extensive use as a noun eventually caused the mark to lose its ability to indicate the source of the goods. If a mark becomes generic for the goods or services, its federal registration may be cancelled. In addition, such a mark loses its capability to operate as a trademark, because it can no longer function as an indicator of source. For this reason, proper trademark usage is important.

A trademark is an adjective, not a noun or verb, and should be followed, where possible, by a generic term. For example, Nike might display advertising that shows an athlete talking about her NIKE athletic shoes, not her Nikes. Similarly, Simonize might have advertising showing a consumer talking about polishing her car with SIMONIZE wax, not Simonizing her car.

A trademark should never be used in the possessive or plural, unless it is a possessive mark like McDonald's. We eat at a McDonald's restaurant, not at McDonald's. The trademark owner is responsible for protecting its mark, including educating the public regarding proper use of the mark. Proper use by the public is extremely important to prevent a mark from becoming generic.

Proper Trademark Use Improper Trademark Use
You photocopy papers on a XEROX machine. You Xerox papers.
You wipe your child's nose with a KLEENEX brand tissue. You wipe your child's nose with a Kleenex.
You wear a WINDBREAKER brand shirt. You wear a Windbreaker.

KLEENEX and XEROX are examples of trademarks that are commonly misused and therefore at risk. However, the owners of these marks diligently attempt to control their use and devote considerable resources to educate the public that these are in fact trademarks. Kimberly-Clark advertises that KLEENEX is a trademark and not a generic term. Similarly, Xerox Corporation actively polices the use of its mark and asks that the mark never be used as a verb.

Proper trademark use is straightforward. While use of the registration symbol, ®, is not required, it is highly recommended. When using an unregistered trademark or service mark, one should use a superscript TM to notify others that this is a trademark. Similarly, the registration symbol, ®, should be used with registered marks to put the public on notice that this is a trademark. In addition, the mark should have an initial capital letter or be presented in all capital letters, and it should always be used as an adjective, for example: NIKE shoes, PEPSI drink, KODAK film, EBAY auctions, FORD motor vehicles, and KLEENEX tissues.