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.

The Guidelines

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.

—Steve Cuno

Let me begin by confessing my weakness for the Beef ’n Cheddar sandwich at Arby’s. It is my sole vice, provided you don’t count my other vices.

Recently, while chowing down on a B ’n C, I chanced to read the copy on the cup that came with my meal. Here’s what it said:

Are you wiping away a tear?

Yeah, neither am I.

Lucky thing they registered “Arby’s is delicious.” Now they are assured that no one will rip off that highly creative line in some vain attempt to claim that their food is delicious.

Yet the line seems a little superfluous. I mean, assuming it’s true, wouldn’t we be able to tell without coaching from a cup? By, you know, taking a bite?

It’s also a good thing that they rendered “Serve, Refresh, and Delight” with initial caps. It makes those three little words look way more important. And thank goodness they troubled to remind us of who they are and what they do. Else, I might have driven away with a lesser impression, based on the unceremonious way in which the underpaid, disheveled, indifferent person wordlessly thrust my order at me through the window.

Perhaps I am being overly critical. After all, the message on the cup wasn’t written for me. It was written for the CEO and board of directors. Maybe reading it made them feel all warm and fuzzy.

Oh, and why isn’t there a comma after “Sure”?

I should know better than to read cup copy.

I kinda wish he hadn’t said that.

To dichotomize science (“rules”) and art is just plain wrong. You don’t get one without the other, because one follows from the other. If you’re going to compose a sonata, you would be wise to begin by studying sonata form. If you’re going to prepare fugu, I cannot emphasize enough the importance of first leaning to identify and remove the toxic organs. If you’re going to build a beautiful bridge, I sure as hell hope you know a thing or two about civil engineering.

And, sorry, Bill, but persuasion is very much a science. The art is in applying it, not ignoring it.

Self-proclaimed creative types invoke Bernbach to defend irresponsible work. If you value art over and to the exclusion of the science of persuasion, you should stop pretending to be an advertising pro and hit up the National Endowment for the Arts for a grant instead.

Having something to sell, that’s not marketing.

Having something that people want to buy, that’s marketing.

​​Alas, professionals. Some of them seem to think that expertise in one area gives them expertise in all.

I once prepared a campaign for a chain of mental health facilities. Like most poorly managed companies, this one wouldn’t run an ad unless every psychologist in the organization approved it. Tip: If you want unremarkable advertising, committee approval is the way to go. 

Most of the psychologists I met with were great. One, however, informed me that my writing was wholly unprofessional. You can imagine my chagrin. At the time I had been writing ads for 15 years. I’d somehow gotten it into my head that I knew how to write ... that I knew how to write ... well, that I knew how to write professional copy.

“For instance,” he went on, “here the ad offers a ‘free’ initial consultation. Very unprofessional. ’Without charge.’ There. That’s professional.”

I knew better than to point out that “free” outperforms in the real world. He probably wouldn’t have believed me and, either way, wouldn’t have cared. 

So, instead, I told him that his peers were fine with the wording.

Drawing a heavy sigh, he said, “If you want to know if the instrument is in tune, you should ask the musician who has perfect pitch.”

Here I resisted the urge to say, “Listen, you arrogant twit ...”

His CEO backed him up. She said, “I want effective advertising that doesn’t call attention to itself.”

Except for the “effective” part, that was exactly what they ended up with. Then the CEO complained that the advertising didn’t increase their business. “See?” she said. “Advertising doesn’t work.”

In time, I made it my policy not to work with clients who think they know more about advertising than I do. They indeed may, but if they do, then they should write their own ads or retain someone smarter than either of us. If they only think they know more? Here I shall defer to the late David Ogilvy: “Any fool can write a bad advertisement, but it takes a genius to keep his hands off a good one.”

​​I RECENTLY came across an online ad that said, “The reason our price is low is because we spend nothing on advertising.” 

What an interesting claim to make--in a paid advertisement.

It reminds me of the time my mom, in the early stages of dementia, phoned me to ask for my phone number.

The notion that advertising raises prices, or that its lack diminishes them, is a myth.

Not once in the history of advertising has a CEO said, “We need to advertise, so let’s raise prices.” Neither has a CEO ever said, “We need to lower prices, so let’s quit advertising.” 

​When prospective clients request an advertising proposal, sometimes they choke on the budget. At that point, some re-allocate funds and some send me packing, but the one thing none of them does is draw a heavy sigh and say, “Guess we’ll have to raise prices.”

In the sense that all company revenues come from sales, sure, ultimately the consumer pays for advertising. But that wasn’t the question. The question was whether advertising raises prices.

Suppose, for the sake of argument, a company ceased advertising and passed the savings to customers. Know how much those savings would amount to? Maybe a penny or three per item. If that. McDonald’s has a huge advertising budget. But the per-item costs gets pretty danged small when you spread it over billions of sandwiches, billions of fries, billions of drinks, and on and on.

When advertising increases sales, which is, you know, kinda its job, it becomes a profit center, not an expense. Increased sales increase production, resulting in economies of scale and substantial savings for the company. The company may or may not pass on the savings to customers. 

Pricing is determined by what people are willing to pay. What people are willing to pay is determined by their perception of value. You may have noticed, for instance, that a Mont Blanc pen costs somewhat more than a Bic pen. Trust me on this: the difference has nothing to do with their respective advertising budgets. If no one wants to pay enough for a product to cover the producer’s expenses plus yield a bit of profit, the product will disappear.

​—Steve Cuno