IP Tech Knowledgy

Trademark owners should always use their trademark as the brand of the product or service, and not as a descriptive or generic name for the product or service itself. Using the brand to describe a feature of the offering or as the name of the product itself may weaken the mark and could be used against the owner’s claim that the term is a protectable trademark. As an example, an investment company that wants to promote the brand SAFETY NET as a savings plans to benefit its client’s heirs should refer to the program as the “Safety Net investment program,” and never as “a safety net that helps generate inheritance.” Even the nuance of stating “with Safety Net you benefit by …” is much less risky than “with this safety net you benefit by….” Making this distinction — and always being careful never to use the term in the narrative sense — will help solidify trademark rights, especially if the mark might tend toward being considered descriptive. If the owner has coined a new term for a product or service, the owner should initially decide if the term will be the name of the product that everyone else can use, or the brand that no one else should be using.     

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com