(Diana Cafazzo and Alice-Anne Morlock are lawyers at the Toronto law firm of McMillan Binch and members of the firm’s KNOWlaw Group.)

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As more and more television producers and broadcasters begin to focus seriously on the business of merchandising their properties, one of the first things they are advised to do is register their valuable trademarks.

While registration is very important, it’s not enough on its own. Even after registration, you must follow certain rules with respect to how you use your trademarks.

If you don’t, you can end up with a trademark that is useless in preventing other people from using the trademark. In other words, you will have destroyed your own trademark.

You can avoid this undesirable state of affairs by taking good care of your trademarks, and by following the seven rules set out in this column. These rules also apply to trademarks which you haven’t registered.

1. Always use your trademark as an adjective.

Always use a trademark as an adjective and never as a noun or verb. For example, you should never say ‘Sleep well on your hide-a-bed.’ Instead, you should say ‘Sleep well on your hide-a-bed convertible sofa.’

This is an easy rule to remember. As you can see from the example, though, it is often awkward to put into practice.

As tempted as you (and your marketing people) may be to use your trademark as the actual name of your product, the consequences of doing so can be disastrous. The trademark can actually cease to be a trademark. It is then said to have become a ‘generic’ term.

That means that you will have lost all of your exclusive rights to use the trademark and that it will be available for anyone to use. Aspirin, thermos, cellophane and escalator are all common descriptive names which at one time were trademarks but lost that status in some countries because they were used as nouns.

The owners of the trademarks for Xerox (for photocopiers) and Roller Blades (for in-line skates) are fighting constant battles to ensure that their marks aren’t lost by becoming generic terms.

2. Make your trademark stand out in the crowd.

Your trademark should always be emphasized or given ‘special treatment’ so that it is easily distinguishable from any accompanying text.

For instance, it’s a good idea to display a trademark entirely in capital letters. If the trademark is used in copy which is itself all in capital letters, then display the trademark in a bolder face or larger size type, or in a different color, or underline it or put it in quotation marks – anything that will make it stand out. Naturally, the common descriptive name of your product or service should not receive the special treatment you give to your trademark.

3. Don’t make changes to your trademark.

When it comes to trademarks, variety is not the spice of life.

You should not change the spelling of a trademark made up of a word or words, even in a minor way. You shouldn’t even add or delete a hyphen. If your trademark consists of two separate words, then leave them that way and don’t combine them. The converse is also true. Don’t abbreviate your trademark. Don’t break your trademark at the end of a line of print. Never add a prefix or suffix to your mark, whether with or without a hyphen. If your trademark is a logo or design, you should use it in exactly the form in which it was registered.

If you need more than one version of a trademark, then you should consider registering each different version.

4. Use trademark notices.

You should indicate in all of your advertising and labeling that your trademark is registered. You do this by placing the symbol ¨ in close proximity to the trademark in at least one place in the text. In addition, you should also use a written legend such as ‘xyz is a registered trademark of ABC Corporation.’

Some people prefer not to put the symbol ¨ near their trademark, but instead use a (less intrusive) asterisk. If you choose this route, though, it is even more important that somewhere on the ad copy or on the packaging you use a written legend. It would read something like, ‘*xyz is a registered trademark of ABC Corporation.’

If you have licensed the use of the trademark to another company, then you should make sure that your licensee uses a notice such as, ‘xyz is a registered trademark of ABC Corporation used under licence.’

Even if your trademark is not registered, you can indicate to the public that you regard it as being a trademark and that you claim exclusive rights to the mark. Instead of the symbol ¨, you use the letters ‘tm.’ In that case, the legend should read: ‘xyz is a trademark of ABC Corporation.’

5. Use it or lose it.

It’s a basic principle of Canadian trademark law that if you stop using your trademark you could well lose your rights in the mark.

If you have registered a trademark but then stop using it, another company (often a competitor) who wishes to register the same or a similar mark is entitled to take proceedings to expunge your registration because the presence of your inactive trademark on the Trade-marks Registration is blocking its application in the Trade-marks Office. You may then not be able to avoid the loss of your trademark if you haven’t kept the mark in active use.

6. Take special care when you authorize another company to use your trademark.

If you plan to license the use of your trademark to another company, you need to take special precautions. If you fail to take these precautions, you will be jeopardizing the validity of your trademark.

Canadian law provides that a trademark will not be valid if it is used by any company other than its owner, unless two tests are met. First, the non-owner must be licensed by or with the authority of the owner to use the trademark. Second, the owner must have, under the licence, direct or indirect control of the character or quality of the goods or services of the licensee.

In addition to having a written licence that gives you quality control, you should make sure that you can establish that you actually do control the character and quality of the goods or services. It would be wise for you to make periodic inspections of premises, goods, written materials displaying the trademark, advertisements etc. so that you can demonstrate that you have this actual control.

7. Watch out for unauthorized use by third parties.

The first six rules deal with your own use of your trademarks. This final rule deals with the actions of third parties.

If other people are using a trademark which is the same as or similar to yours in association with goods and services which are the same as or similar to yours, and you fail to use your legal rights to stop them, then eventually your rights in your trademark may be lost. To avoid this, you must keep a watchful eye out for potential infringers and you must be vigilant and aggressive in taking action to stop them.

Your trademarks are expensive and valuable assets. If you take proper care of them, they will serve you well for many years.

(This article contains general comments only. It is not intended to be exhaustive and should not be considered as advice on any particular situation.)