Using & Enforcing Your New Trademark

Written by Neil Juneja, Founder & Managing Partner of Gleam Law, PLLC. 

So you have successfully registered a state or federal trademark for your cannabis business or product? Congratulations! Here are the tips we provide to every one of our trademark clients to help them use and enforce their Intellectual Property.

What does your trademark registration do?

Your new trademark registration is an intangible asset that should be included in your company’s financial reports. Trademark registration gives you an exclusive property right to use the mark in connection with goods and/or services listed on your certificate. You may sell the trademark in its entirety, charge others a royalty fee to use it, or prevent others from using a confusingly similar mark.

How can you protect your trademark?

As the trademark owner, the burden is on you to defend your trademark from infringement. The government will not enforce your rights for you. If you find any unauthorized use of your trademark or are concerned that consumers might confuse you with a competitor because of a similar name, look, or logo, you should promptly contact your attorney.

What is “genericide”?

Long-term and widespread use of a trademark as a generic term may kill the original owner’s trademark registration and all accompanying rights. Examples of trademarks killed by “genericide” include ESCALATOR for “moving staircase” and ASPIRIN for “pain relief medication”. To protect your mark from “genericide,” 1) never use it as an adjective or verb, 2) always use it as a proper noun, 3) always use the appropriate trademark symbol, and 4) remain vigilant of unauthorized or inaccurate third-party use.

How should you use trademark symbols?

Every time you use your trademark, it is best to use a trademark symbol with it. The symbol should immediately follow the registered words or images in superscript. Each symbol has a different meaning, but they all represent a legal claim of ownership over the mark.

The circle R designation is only used on trademarks or service marks that are successfully registered with the United State Patent and Trademark Office.

The TM symbol may be used on any trademark that you claim ownership over, including state registered trademarks, regardless of whether the trademark is registered or not.

The SM symbol may be used on any service mark that you claim ownership over, including state registered marks, regardless of whether the service mark is registered or not. You may use a TM instead of an SM for service marks, if you prefer.