
Ask HN: Will I really lose my trademark if I don't use it as an adjective? - ready_to_launch
Bad flashbacks to grade school grammar class: today my lawyer informed me that we risk losing our trademark if we use it as a noun rather than as an adjective on our marketing site.<p>For those familiar with this issue, your thoughts would be greatly appreciated.<p>A bit of backstory: we’re a tiny, two-person bootstrapped startup about to launch a SaaS product.  We’ve done everything ourselves, except a couple things that seemed legally intimidating and we got a lawyer’s assistance with: (1) the ToS&#x2F;PP for our site, and (2) a trademark application for our product&#x2F;service.<p>We recently had a soft launch of our product, and I sent our site’s URL to the lawyer so he could prepare a Statement of Use (a required submission to the USPTO to demonstrate that we are using the mark in commerce).<p>Well, I got a call-back from the lawyer saying that, unfortunately, there was nothing on our website he could submit for the Statement of Use, because nowhere on the site do we use the trademark as an adjective.<p>I was really puzzled by this — Google calls itself “Google” on its website, not “Google search engine.”  “Spanx” calls itself “Spanx,” not “Spanx absurdly restrictive undergarments.”  Why don’t they have to awkwardly adjecti-fy their marks?<p>He said legal precedent has shown companies who fail to use their marks as adjectives (aspirin, for example) risk losing the rights to their marks altogether.<p>Yet, I feel as though I rarely see this kind of adjective-style usage on tech sites.  And frankly, it would be extremely clunky to try to implement it throughout our own site.<p>Any wise, informed, practical, helpful, empirical, amusing, or elucidating advice for this adjective-fatigued co-founder?<p>Many thanks!
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dragonwriter
> He said legal precedent has shown companies who fail to use their marks as
> adjectives (aspirin, for example) risk losing the rights to their marks
> altogether.

I am not a lawyer, but I find this odd as a generic statement and particularly
with this example. It seems to conflate issues relating to genericization
analysis with issues related to meeting the filing requirements and whiles it
is true that use of the trademark as certain parts of speech can be relevant
to genericization analysis, typically the concern is about use as a verb, or
in a pluralized or possessive form if that isn't thow the trademark itself is
normally. Either noun or adjective use is fairly normal—indeed, trademarks
often name a product and would appear mainly as a noun.

Use as a _generic_ noun rather than a specific one for the product is the
problem.

That being said, I would think adjective use inan appropriate context is an
easy way to clearly meet the required demonstration of use in the specific
market, though lots of the specimens submitted in trademark registrations
don't​ show adjective use or even use in a sentence.

~~~
ready_to_launch
Good point re: conflation... I'll attempt to elaborate below:

Due to particulars of our space and product name, we aren't acutely concerned
with it being generified down the road.

But that aside, the lawyer suggested that not having an adjective use case to
submit would hurt our chances of having our demonstration of use cleared and
accepted -- period, at all, from the get-go -- which IS very concerning.

However, I had him look up the demonstration of use submitted by another
company in our space, and they didn't have any adjective use cases in their
(approved) submission. So I'm thinking maaaaybe this isn't as much of a
concern as he's making it out to be.

It would be very awkward to put adjective use cases on our site. Plus, he made
it seem as though we'd have to use it consistently, rather than just bury it
somewhere.

It would be as if Adobe's page for Photoshop exclusively referred to it as
"Adobe® Photoshop® software" (as dictated in Adobe's trademark guidelines)
rather than just "Photoshop." That would be pretty bizarre. And after working
so hard on the copy for our site, I really cringe at the thought.

------
WorldMaker
I am not a lawyer, take this advice with a large grain of salt.

From what I understand: Your lawyer is technically correct, but possibly being
overly conservative/risk-averse about it, which is the job of a good lawyer.
If you trust your working relationship with your lawyer, trust your lawyers
advice on this and find a way to meet your lawyer somewhere in the middle.

First of all, ordinary trademarks are no longer registered (the TM symbol is
kind of unregulated at this point and only really as effective as you can
prove in a court case that you've used it longer and it isn't just a generic
word; you arguably don't even need to use the TM symbol itself these days).
I'd say that I see a lot more TM than (R) trademarks most days, but on writing
that am actually not all that certain.

If you are registering a trademark, you are registering the (R) symbol variant
remains stricter about what may be registered and how. (In exchange for being
harder to register and stricter in its registration you get stronger
protections in court.)

If you look at examples of continued (R) usage you will find a few of the
particularly older, more conservative brands do go to great pains to avoid
even being used as a adjectives (they don't want to be used as real words at
all) and are often "X(R) brand product" like "Kleenex(R)Brand Tissues".
(Kleenex is one that is particularly conservative on this front as a lot of
people do use Kleenex as a generic noun and they have been in danger of losing
their trademark over the years because of that.
[http://kleenex.com](http://kleenex.com) is littered with "Brand Product"
speak.)

You could probably get away with not registering your trademark at all, as
most startups seem to do. If you do want to register, you should probably
follow your lawyer's advice, even if it does feel particularly out of date or
overly conservative/risk-averse.

Hope that helps.

~~~
ready_to_launch
Thanks for your thoughts on this!

We've already registered the mark -- the application was approved by the
USPTO, but there's just one last step of proving that we're actively using the
mark in commerce (since otherwise it's "use it or lose it").

You make a great point about risk-averse advice being good lawyerly advice. I
guess where that starts to chafe a bit for me is when the risk-averse advice
also runs counter to the industry standard.

It seems odd to defy industry standards in a detrimental way in the name of
safety. Shouldn't following industry standards be safe enough? As noted in a
prior comment, I don't see Adobe exclusively saying "Adobe® Photoshop®
software" in the copy on their marketing site... they just say "Photoshop." So
why can't we do that? It would be extremely awkward to do it the other way.

You may be right that we could be stuck doing it the outdated/awkward way if
we want the (R), but I'm hoping that is not the case! Somehow other (R) owners
have avoided this problem... fingers crossed that we can as well. It was just
such odd and surprising advice to receive from him today, that I was wondering
if any other startups had waded these waters.

~~~
WorldMaker
It's interesting that you bring that up as Adobe is another one fighting to
keep their trademark versus an increasing generic usage of it. Their own press
kit requires that they do require the press to exclusively write "Adobe(R)
Photoshop(R) software":

[http://www.adobe.com/aboutadobe/pressroom/pressmaterials/pdf...](http://www.adobe.com/aboutadobe/pressroom/pressmaterials/pdfs/photoshop_guidelines_pr.pdf)

I don't know why their own website is more lax on the subject and not held to
same standards (as opposed to Kleenex's site, for example, which is). I
suppose that is a question for Adobe's lawyers. (I further suppose that is an
ongoing battle between Adobe's marketing department and its lawyers and
probably the lawyers are shaking their heads in disgust sometimes at their own
marketing website.)

«Shouldn't following industry standards be safe enough?»

Maybe? We seem to be a pendulum swing where marketing copy is more
relaxed/conversational and drops TM and (R) marks and is more lax with their
restrictions. This seems to me probably because there hasn't been a very high
profile trademark dispute in recent internet memory, so the risk seems low and
the trade-off of being more friendly/approachable/conversational in marketing
copy seems worth the risk.

That pendulum swings with your competition. You need to know your competition
and assuage the risk that they might want to genericize your trademark for
their own competitive advantage. How much you need to do to protect your marks
is probably some complicated formula of what you expect from your competition,
what it is you are actually protecting, and how much effort you think may be
needed to defend it in a court of law. Particularly to that last part, you
likely want to defer to the risk aversion of your lawyer, presuming that
lawyer is going to be the one helping you defend the trademarks in the court.

Adobe (and Microsoft and some of the other "conversational marketing"
trademarks) have a fair number of lawyers on staff and a "war chest" of one
sort or another in assets they can deploy to defend their trademarks. As a
startup you likely don't have anywhere near those resources, so having a long
conversation with your lawyer about what marks you may need to defend, against
whom, and deeply assess the risk. There may be a compromise position where a
conversational marketing site is accompanied by a more formal press/PR site,
which may be more than enough proof that you are using the mark in commerce.

There's also a case that your competition doesn't care about your trademarks
at all and there isn't any risk and you don't need to play it safe (or even
have registered trademarks at all). You are in the best position to determine
your risk and your lawyer is your best professional asset to work with on
figuring that out.

If you think that your lawyer is being too risk-adverse you might seek other
lawyers' opinions, especially a specialist in trademark disputes, but be
prepared to pay for that. In that case you probably also need to be prepared
to pay for that specialist's time in the case of a defense of your marks, too.

