This is the ninth blog in Finkel Law Group’s ongoing trademark law series. Previous blogs have explored how to secure, register and enforce trademark rights through cease and desist letters, litigation, and administrative proceedings. This blog shifts focus to a foundational yet often overlooked aspect of trademark protection: How your company’s use of its mark—in particular, the risks of improper trademark use—can determine whether the legal rights are preserved or lost.
Proper trademark use is not just a branding matter; it is a legal necessity. The federal Lanham Act and California’s Business and Professions Code require that trademarks be used correctly and continuously in commerce to maintain legal rights in the mark. Improper use of a mark may lead to erosion of its distinctiveness, vulnerability to legal challenges, or, in the worst case, complete loss of legal rights through abandonment or genericize. This blog provides you with a comprehensive guide to proper trademark usage under federal and California law and outlines best practices to help your company safeguard its valuable brand assets in its trademarks and service marks.
The Legal Imperative for Proper Trademark Use
Under section 45 of the Lanham Act, a trademark is considered abandoned when its use in commerce has been discontinued and there is no intention to resume such use. Abandonment can also occur through improper use that causes the mark to lose its significance as an indicator of origin of goods or services. California’s Business and Professions Code mirrors these principles of federal law. Improper trademark use may weaken the distinctiveness of a mark, lead to genericize (when a brand becomes synonymous with a general product), invite infringement or render enforcement more difficult.
Trademark Grammar: Use Your Marks as Adjectives
Trademark law emphasizes that a trademark must function as a source identifier, not as a substitute for the name of a product or provider of a service. This legal and linguistic distinction is important. Misusing a trademark by using it as a noun or verb or generic term undermines its ability to signify a unique source of a good or service and can ultimately jeopardize its protectability.
The foundational legal principle here is that a trademark indicates the source of goods or services, not the goods or services themselves. Courts and the United States Trademark Office (U.S. PTO) scrutinize how a trademark is used in commerce to determine whether it continues to serve this source-identifying function. When a trademark is used generically—that is, in a way that treats the brand name as the name of a product itself—it begins to lose its distinctiveness and may become vulnerable to genericize. For example, in the case of Kleenex®, the correct usage would be “Please hand me a Kleenex® tissue,” not “Please hand me a Kleenex.”
This issue is not academic. In King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir. 1963), the U.S. Second Circuit of Appeal in New York concluded that the term “Thermos” had become generic because consumers and retailers overwhelmingly used it to describe a type of product rather than its source. The court found that King-Seeley, despite efforts to protect its trademark, had allowed the term to slip into the public domain. Similar outcomes befell other marks like “Cellophane,” “Escalator,” and “Yo-Yo.” Modern companies like Google, Xerox and Velcro Companies have engaged in public awareness campaigns to prevent this type of misuse. These campaigns often include messaging that explains how to refer to the brand correctly (e.g., “Use Google™ to search the web” vs. “I googled it”) and discourage use of their marks as verbs or generic nouns.
Best Practices for Adjective Use
So, what are some best practices your company can use to protect your trademarks from becoming generic designations?
- Always pair your trademark with a generic term. Use “Nike® running shoes,” not just “Nikes,” and “Adobe® design software,” not simply “Adobe.”
- Avoid using your trademark as a verb. Refrain from phrases like “to Uber to work” or “to Photoshop an image.” Instead, say “take an Uber® ride” or “edit the image using Photoshop® software.”
- Avoid plural and possessive forms of your trademark. Say “LEGO® bricks,” not “Legos,” and “Starbucks® coffee,” not “Starbucks'” when referring to the products.
- Do not truncate or modify your trademarks. Even seemingly harmless changes – like calling Microsoft® products “MS” tools – can weaken the strength of your brand.
To reinforce proper usage internally and externally, your company should develop a trademark usage guide for your employees and vendors that includes proper and improper examples of trademark use, guidelines on pairing trademarks with generic terms and instructions on capitalization, font usage, and trademark symbols.
When evaluating a mark for proper use, courts and the Trademark Office will consider how the public perceives the term. Consistently using trademarks as adjectives strengthens the presumption that the mark identifies the brand and not the category. This reinforces its legal protection and supports any future actions your company may need to take to enforce its legal rights in the mark. Ensuring your business and your audience treat your mark as a brand name rather than a product name is fundamental to preserving the commercial and legal value of your trademark.
Proper Use of Trademark Symbols
Trademark symbols provide legal notice to the public in the following ways:
- ™ (TM) is used for unregistered trademarks on goods.
- ℠ (SM) is used for unregistered service marks.
- ® is used only after the trademark is federally registered under the Lanham Act.
Using ® before registration is unlawful and may constitute fraud on the U.S. Trademark Office. Conversely, failure to use ® after registration may impact your company’s ability to recover damages if you decide to file an infringement lawsuit.
Make Sure You’re Consistent Across Platforms and Media
Consistency in trademark usage is not only good branding practice, it is a legal imperative. Courts and the U.S. Trademark Office scrutinize how a trademark appears across multiple platforms to determine whether it’s functioning properly as a source identifier. Inconsistent or incorrect use may erode your mark’s distinctiveness, reduce enforceability, and even jeopardize a registration. Under federal law, trademark specimens submitted to the Trademark Office must show the mark actually being used in commerce. Significant variations in how the mark is presented in those specimens—compared to the registered form—can result in office actions or cancellation proceedings. In the case of In re Bose Corp., 772 F.2d 866 (Fed. Cir. 1985), the U.S. Court of Appeal for the Federal Circuit emphasized that the integrity of the mark as registered must be preserved in actual use.
Variations that might seem minor from a marketing perspective can be problematic legally. Examples include:
- Altering the font or layout of a design mark.
- Changing capitalization, hyphenation, or spacing in a word mark.
- Using abbreviations or acronyms in place of the registered mark.
- Adding or omitting generic terms in a way that changes commercial impression.
Maintaining consistency in the appearance of your company’s mark strengthens brand recognition, reduces the likelihood of consumer confusion, and preserves the legal enforceability of your mark. Deviations from registered forms should be rare and evaluated in consultation with your trademark attorney to avoid creating gaps in protection or undermining the brand’s source-identifying function.
Avoid Generic or Descriptive Uses of Your Trademark
Even with proper registration, a trademark can lose its legal protections if it becomes a generic term in the eyes of consumers. This risk arises when the mark is used so often or so loosely that it no longer distinguishes your company’s products from those of other company’s products.
This was famously the case in Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921), where the term “Aspirin,” once a proprietary name, was held to be generic in the U.S. because the public had come to understand it as the common name for a type of medication. The federal district court in New York found that Bayer’s failure to police and guide usage of its mark “Aspirin” contributed directly to the erosion and ultimate loss of the mark’s legal protections. To prevent such an outcome for your company’s marks, it is essential to maintain clear boundaries between your trademark and the generic product category it serves. This is not only a public-facing task but also an internal compliance and training issue for your company’s employees, contractors, vendors and distributors.
Some Practical Guidelines to Follow
What are some practical steps you can follow to protect the legal rights in your marks?
- Refrain from using your trademark as a substitute for the product name. Instead of saying “Buy our Acme™,” say “Buy our Acme™ brand generators.”
- In marketing copy and public messaging, pair the mark with a descriptor. This reminds consumers that the mark refers to a source, not a type.
- Educate employees, vendors, and partners. Provide training and written policies that explain proper trademark language and reinforce correct usage in e-mail communications, product packaging, signage, and customer interactions.
- Actively monitor third-party and media usage. If journalists, resellers, or influencers misuse your trademark in publications or online listings, consider a polite correction or formal request to amend the usage. Keep a record of these efforts.
- Use consistent forms in domain names and social media. While legal constraints on handles and URLs may require variations, try to standardize presentation in bios, page headers, and meta descriptions to reinforce the brand as registered.
- Use disclaimers and qualifiers when appropriate. For example: “Band-Aid is a registered trademark of Johnson & Johnson. Use of the term does not imply a generic adhesive bandage.”
Maintaining the distinctiveness of your company’s trademark requires vigilance and a proactive communications strategy to ensure your brand name does not become a casualty of its own success.
Controlling Third-Party Use: Avoiding Naked Licensing
One of the most overlooked dangers in trademark law is “naked licensing.” A scenario in which the trademark owner licenses the use of a mark, but fails to exercise adequate quality control over how it is used by the licensee. Such arrangements can result in a legal finding that “naked license” has been granted, and the mark has been abandoned under the legal standards set forth in the Lanham Act. For instance, in Eva’s Bridal Ltd. v. Halanick Enterprises, Inc., 639 F.3d 788 (7th Cir. 2011), the U.S. Court of Appeal for the Seventh Circuit in Chicago held that the trademark owner had abandoned its mark by allowing a licensee to operate under the brand with no supervision or oversight. The absence of inspections, guidelines, or contractual controls rendered the trademark meaningless as a symbol of consistent quality. Don’t let that happen to your company’s mark.
Preventative Legal and Operational Measures
So, what are some preventative legal and operational measure to protect the legal rights in your company’s trademarks? We’re glad you asked.
- Include detailed quality control clauses in all trademark licensing agreements. These clauses should specify standards of service, product quality, appearance, and compliance with your company’s brand guidelines.
- Retain audit and inspection rights in your license agreements. Conduct periodic evaluations of how the licensee is using the mark, both in branding and in customer-facing activities.
- Supply a trademark usage manual to all licensees and distributors. Provide style guides, logo usage rules, and approved language. Require the licensee to obtain approval before releasing any materials that reference the trademark.
- Enforce compliance with your trademark licenses and operational guidelines. If a licensee violates your trademark terms, take corrective action promptly. Prolonged inaction may be interpreted by courts as evidence of abandonment. Don’t do that.
Licensing can be an effective way to expand the reach of your company’s brands, but it must be approached with legal rigor. Trademark rights are tied not just to ownership but to consistent control of the mark in commercial use.
Internal Education and Enforcement
Even well-meaning employees can inadvertently misuse a trademark. If the misuse is widespread or goes uncorrected, it can be used as evidence in opposition or cancellation proceedings to show that the mark has lost its distinctiveness or is being used generically. What are some best practices for internal use at your company?
- Develop a comprehensive trademark use policy. This should cover grammar rules, symbol use, logo formatting, naming conventions, and reference to competitors.
- Integrate trademark training into on-boarding processes. Include examples of proper and improper use of your company’s marks, and make training mandatory for all departments that create content or speak with customers, distributors and licensees.
- Review marketing, sales, and service scripts regularly. Ensure that customer-facing communications reinforce your trademark’s function as a brand indicator.
- Assign trademark compliance oversight. Consider designating a brand compliance officer or legal liaison to review materials and conduct periodic audits.
By embedding trademark discipline into your company’s culture, you reinforce legal protection and reduce the risk of accidental dilution or misuse of your marks.
Think About Conducting a Trademark Use Audit
A trademark use audit is a structured and comprehensive review of how your marks are used across your organization. Its purpose is to ensure compliance with legal standards and identify any inconsistencies or improper uses that may weaken your trademark rights or expose the brand to legal challenges. Begin by examining your company’s website and digital assets, including landing pages, navigation menus, footers, and blog posts, to ensure that your trademarks are displayed correctly and consistently. Review your company’s product packaging and labeling to confirm your marks appear in their registered form without unauthorized alterations. Evaluate your company’s advertising and promotional materials—such as flyers, trade show banners, digital ads, and print brochures— to ensure proper trademark use because these are often the most visible brand touchpoints for consumers.
Additionally, inspect your company’s social media presence and domain names. Review biographies, usernames, hashtags, and linked content to verify that your company’s trademark is presented in a manner consistent with your brand guidelines. Internal documents and templates, including e-mail signatures, presentation slides, invoices and contracts should also be checked to ensure that employees are using your company’s marks correctly in day-to-day business operations.
As part of your audit process, maintain an archive of trademark uses with timestamps. This documentation serves as critical evidence for demonstrating continued use in the Trademark Office’s maintenance filings, supporting enforcement actions, and defending against legal disputes before the Trademark Trial and Appeal Board (“TTAB”). A well-executed trademark audit not only strengthens your company’s legal protections, but it also reinforces your brand’s identity and value across all levels of your organization.
Federal and California Legal Requirements
Proper trademark use is more than best practices. It is a condition of continued legal protection.
Federal Law
- Under the Lanham Act, 15 U.S.C. §1058 and §1059, registrants must file a Declaration of Continued Use (Section 8) between the fifth and sixth years following registration, and a Renewal Application (Section 9) every 10 years.
- Failure to submit acceptable specimens of use can result in cancellation of the registration.
California Law
- Under California’s Business & Professions Code, §14285, California state trademarks must be renewed every 5 years, accompanied by proof that the mark remains in use in commerce within the state.
In both jurisdictions, “use” means bona fide commercial use in the ordinary course of trade—not merely token use or sporadic sales.
Legal Implications
A lapse in trademark use, even if temporary, can open the door to legal challenges. Third parties may file cancellation petitions with the Trademark Office based on non-use, potentially undermining years of brand investment. Similarly, improper usage — like presenting a trademark in altered forms, using inconsistent spellings, or deviating from the registered format — can prompt refusals from the Trademark Office or objections in opposition or cancellation proceedings. In short, “use it or lose it” is more than just a slogan. It is a foundational principle of trademark law that underscores the need for disciplined, lawful, and continuous brand use.
Positioning for Exploitation and Enforcement
Proper trademark use is not only about protection—it sets the stage for monetization and strategic enforcement. Trademarks that are consistently used, clearly distinguished, and vigilantly protected become more attractive for licensing, franchising and sale. Our next blog in this series will explore how businesses can exploit their trademark rights through licensing arrangements, asset transfers, and even as collateral in financial transactions. None of these strategies are viable unless the underlying legal rights are strong, unambiguous, and legally enforceable. Consistent, proper use today paves the way for revenue-generating opportunities tomorrow.
Final Thoughts
Trademark protection is an ongoing and proactive responsibility of everyone in your company. Improper use can quietly erode legal rights that took years to establish. Disciplined and consistent usage strengthens your company’s ability to enforce those rights and explore monetization opportunities such as licensing and brand expansion. To protect and preserve your company’s trademark assets begin by auditing all trademark uses across internal documents and public-facing materials. Review and update your brand guidelines, ensuring that all vendors and external partners comply with your trademark usage standards. Provide regular training to key departments, including marketing, sales and customer service to ensure every member of your team understands and adheres to proper trademark use.
Finally, consult Finkel Law Group to review your current trademark compliance protocols and to develop a long-term brand protection strategy tailored to your company’s business goals.
About Finkel Law Group
Finkel Law Group P.C., with offices in San Francisco and Oakland, has more than 28 years of experience advising clients on all aspects of trademark law, including proper trademark usage, compliance with federal and California maintenance requirements, and brand protection strategies that preserve long-term value. Our attorneys regularly help startups, growth-stage companies, and established enterprises ensure that their trademarks are used consistently and lawfully across all channels of communication and commerce. When you need intelligent, insightful, conscientious, and cost-effective legal counsel to assist you in auditing your company’s trademark use, drafting brand usage guidelines, or implementing compliance measures that reinforce your intellectual property rights, please contact us at (415) 252-9600, (510) 344-6601, or info@finkellawgroup.com to speak with one of our attorneys about your matter.