®, TM, and other trademark questions
I wrote what follows some years ago. Trademark questions keep coming up, so here it is again.
Trademark guidelines: ®, ™ and more
When your brand name slips into the lexicon as a common noun or verb, it’s both good and bad. Good, because ubiquity is a sign of success. Bad, because you could lose your trademark protection. Aspirin, elevator, escalator, cellophane and monopoly all began life as protected trademarks that fell victim to that dread fate.
If you’re concerned about protecting a trademark in the United States, the following guidelines may prove useful. Before you read on, let me point out that I am not an attorney, so do not take this post for legal advice. See an attorney for that. But pleeeeze make sure the attorney is versed in trademark law. Too many corporate attorneys overcomplicate trademark rules or just plain get them wrong.
For the sake of illustration, let’s say you want to market pencil erasers under the brand name “Frimmerz.” While you’re at it, let’s say you also have a fancy, stylized F to display next to the name.
To own a trademark, be the first to take it interstate. It’s not enough to be the first to use or register Frimmerz or the fancy F. You need to be the first to use them across state lines. Even if you obtained the right to use the ® symbol but only sold Frimmerz® erasers within one state, someone else could come along later, market Frimmerz® in two states, own the marks, and force you to quit using them. Doesn’t make sense? Not fair? I don’t make the rules. When I tell you who does make the rules, you’ll understand why they make no sense. Government makes the rules.
About ®. The R-in-circle symbol means you have jumped through considerable hoops to register your mark with the U.S. Patent and Trademark Office. There are a lot of steps, including a trademark search and providing other marketers the chance to contest your ownership of the mark. The process is neither fast, cheap, nor easy. That’s why many companies opt for using a ™ instead.
About TM. The ™ is the common-law version of the ®. You don’t need government approval to use it. Just slap it on your name to make Frimmerz™ and on the F to make F™. You will have announced to the world, “Hands off! These are MY trademarks.” Properly used, the ™ can be just as legally defensible as the ®. Speaking of using it properly...
Proper use of ™, ®, and names and marks
This is where a lot of companies slip up. Here are some guidelines. I’ll illustrate using the ™, but the rules apply for use of the ® as well:
1. Use your trademark as a adjective. Courts have a history of deciding that when a trademark becomes a noun or verb, it ceases to be a trademark. Watch and you’ll see that the owners of names like Kleenex and Xerox are darned careful to use their names as adjectives, as in, “Kleenex brand facial tissue” and “Xerox brand copiers.” So, back to our example, it’s not “a Frimmerz™,” but “a Frimmerz™ brand eraser.” And you never “Frimmer away errors.” You “remove errors with a Frimmerz™ brand eraser.”
2. Set the name apart from surrounding text. Initial caps may suffice, but italics, bolds, all caps, or combinations of the above may provide greater, less-disputable protection. So at the very least it’s a Frimmerz™ brand eraser; but, to be extra safe, it’s probably better to render it a Frimmerz™ brand eraser, a Frimmerz™ brand eraser, a Frimmerz™ brand eraser, or a FRIMMERZ™ (or FRIMMERZ™ or FRIMMERZ™ or FRIMMERZ™) brand eraser.
3. Use the ® or ™ on first reference. I have seen ads that display the ® or ™ next to the name every time they use it. Awkward. As long as you use the name as an adjective and set it apart from surrounding text (per Number 2 above), use of the ® or ™ on first reference is plenty.
4. In the fly type, state who owns the mark or marks. For instance: “Frimmerz” and the stylized “F” logo are trademarks of the M. T. Frimmerz Corporation.
5. When someone uses your trademark improperly, send a letter asking them to stop. You can be more proactive than that, if you want. The Caterpillar Corporation even runs ads in Writer’s Digest magazine asking authors not to use “Caterpillar” when they mean “earth-moving equipment.”
And now, to be practical ...
Name and logo ubiquity doesn’t happen all that often. You should be so lucky as to reach a point where you even have to worry about it. But just in case, you might as well get it right from the start.