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By Rene Dial

Last week I explained the possibility of losing your trademark for becoming generic by misusing the mark and that the trademark registered should be the trademark used.  This week we will look at putting the public on notice by using the ® symbol and discuss Microsoft’s guideline’s when using trademarks associated with their products.

 Registration of your mark with the USPTO allows use of the ® symbol and using the ® symbol has a few advantages.  One of the main advantages is placing other businesses on notice that you are out there and have a registered mark.  When a business searches the registry for a possible conflict your mark should come up.  Also, if your mark is registered and the owner of a conflicting mark attempts to register their mark the examiner should uncover the possible conflict and refuse registration of the conflicting mark.  Registration could possibly save you thousands of dollars from future litigation.  That alone is reason enough to register. The ® symbol simply places the public on notice that you have indeed registered your mark with the USPTO and that you have legal remedies available to you should they decide to infringe your mark.  This is a very valuable tool that has certain legal advantages and remedies should someone infringe your registered mark especially the presumption of your mark’s validity.

 Below is a list from the USPTO that sets out some of those advantages. 

• constructive notice to the public of the registrant’s claim of ownership of the mark;
• a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
• the ability to bring an action concerning the mark in federal court;
• the use of the U.S registration as a basis to obtain registration in foreign countries; and
• the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Microsoft is a trademark savvy company.  They police their marks and make sure the public is on notice that the marks belong to Microsoft.  Small business owners should take heed and apply some of these principles and guidance to their marks.

When referring to Microsoft software and products, apply the appropriate trademark symbols in accordance with the list of current Microsoft trademarks.

The common way to set trademarks apart from other words or nouns is to capitalize the product name and use the appropriate trademark symbol and appropriate descriptor. You may also underlining, italic type, or bold type for the name.

Include an attribution of Microsoft ownership of the trademark(s) in the credit notice section of your documentation or advertisement. Follow this format:

• ·Microsoft, Encarta, MSN, and Windows are either registered trademarks or trademarks          of Microsoft Corporation in the United States and/or other countries.
• Microsoft trademarks identify specific products and services. Do not refer to applications, services, or hardware devices that work with Microsoft products incorrectly. For example, do not refer to products or services that work with the Windows operating system as “Windows applications,” “Windows services,” or “Windows hardware.” If necessary, these types of products can be referred to by their relationship to the Windows operating system by inserting the word “based” between the name Windows and the type of product designed to work with Windows.
• Microsoft trademarks should never be used in the possessive or plural form. They should be introduced as a proper adjective followed by an appropriate descriptor.

 Next week we will continue our walk through the proper use of trademarks and look at Apple’s guidance as to how to use their marks.  Until then have a great weekend!