Who is supposed to write "TM" next to trademarked words and phrases?

This has come up in another thread, and I realized I don’t know anything about this.

Sometimes you see a little “TM” written in superscript just after a trademarked name or phrase. My question is, who is supposed to write this “TM” and under what circumstances? Everyone? All circumstances? Apparently not, I think, but what are the rules?

Also, my follow up question is, why?

-FrL-

http://www.uspto.gov/go/tac/doc/basic/register.htm

http://www.law.cornell.edu/uscode/html/uscode15/usc_sec_15_00001111----000-.html

I think the question is more along the lines of “When are you required (by law or by custom) to add the TM or ® symbols when referencing a trademarked name (that isn’t yours)?”

Came up in another thread when **tomndebb **wrote “…Google[sup]TM[/sup]…” and someone else snarked him for it.

Never.

I don’t understand the legalese. What does “Notwithstanding the provisions of section 1072 of this title” mean? The link to section 1072 seems to say that mere registration is considered notice, making the ® and such unneeded. Which is what I thought was the international law anyway.

Yup, never. that’s the trademark holder’s responsibility, in order to protect the mark and keep it from reverting to generic use. Chicago style specifically say that others are not required to use the trademark bug, and I routinely remove it.

We’re not talking about trademark rights here, but trademark damages. Section 1072 says registration is constructive notice (that means the law will be applied “as if” you knew about the registration, even if you really didn’t). Section 1111 says you don’t get lost profits or damages (you do get injunctive relief though) unless:

  1. Defendant really did know (he had actual knowledge, not just constructive); or
  2. You used the ® symbol.

Okay, then when do you have to acknowledge that a term is trademarked? For example, the term ‘Unix’ applied to computer operating systems (at least) is a trademark owned by The Open Group. Under what circumstances does someone talking about Unix have to acknowledge that Unix is a trademark owned by The Open Group? Is it worthwhile to make a blanket statement such as “All trademarks are property of their respective owners.”?

(The specific case of Unix is complex because it has definitions arising from common use distinctly at odds with any concept of trademark. I don’t especially want to get into any of that here, unless someone gets excessively curious about OS design and history.)

You don’t *have * to. In some cases, it might make sense to. If you are incorporating a part manufactured by another company, you might be required to by agreement, http://www.wdc.com/en/company/branding/tm_guidelines.asp (or “guideline” in this case), and sometimes it might help prevent a trademark lawsuit, but you aren’t required to do it.

I have asked this question a few times and never received a satisfactory answer. I heard that companies will send nasty o grams to magazines telling them that they are using the companies trademark incorrectly in articles. Are these letters just for documenting a paper trail of defending the mark? Or can they resort to harsher legal tactics like sue the magazine and have a realistic hope for winning if the magazine chooses to fight?

Yes. They need to prove they are defending their trademark in case a more serious case of infringement comes up. In addition, freedom of speech trumps trademark law.

If a writer uses, “He reached for a kleenex,” then Kimberly Clark will send a letter, but they cannot prevent him. That doesn’t matter, since sending the letter is what’s important.

They could, but they’d be idiots. The magazine has a strong “freedom of speech” defense. More seriously, it risks losing the trademark if the case goes against them – they would not want the judge to rule that the name is PD. Better to hold off until someone comes up with “Joe’s Kleenexes,” where you do want to shut the guy down.

As stated above, “never” is the correct answer, unless you are the company itself trying to protect it’s own trademark.

That’s why I commented on **Tomndebb ** in that other thread. Why should a Straight Dope mod use a trademark after Google? Is that an official requirement now of board “employees” or just a stylistic quirk? It would be interesting to know.

But as a private individual you never have to use a symbol when you merely refer to a trademarked product. Nor do you have to use the trademark properly in a sentence, as in Xerox-brand paper copy or Kleenex-brand paper tissue. You can say made a Xerox copy or used a Kleenex or for that matter Googled someone.

Note that it is not the public use of such terms that can lose the company its trademark, but the company’s lack of defense against those uses, as **Chuck ** wrote. That’s why the legal notices go out and why companies put ads into magazines like Writers Digest and the Columbia Journalism Review. They don’t expect anyone to change their practices, but it gives them legal protection. Because of these efforts it’s been a very long time since I’ve heard of a trademark being lost because of public use.

The use of trademarked images is a different matter in many ways. You would not need to identify a trademark merely because you put its image onto your website, for example, but its use in certain commercial contexts may require a trademark notice. Commercial considerations do not carry the same first amendment rights to free speech.

The notion that because the SDMB uses Google Ad Sense and therefore has to put a trademark after the use of Google does not fall into this category, however. That’s simply wrong.

However, it would be best to capitalize a trademarked product, would it not?

No. This depends entirely on context. In the sentence Chuck wrote, “He reached for a kleenex,” the kleenex is generic for a tissue. Capitalizing it would remove the generic aspect. Similarly, “she xeroxed the letter” and “they googled for the information” are generic uses of the process, not specific references to a product. In none of the cases would a capital be required or even preferred.

When people say they are xeroxing something they just mean copying it . However, does anyone use Yahoo! to google?

Sure, all the time. To the general public “google” just means to type the word in any text box with the search label. It has lost its context.

Most people use ™ for stylistic purposes, IMO. It looks cute and sardonic.

I’d like to see a cite for these assertions, as my knowledge is just the opposite.

So the usual practice in book publishing is to cap any trademark names (Kleenex, Google, Xerox), avoid using them as verbs (change “xeroxing” to “photocopying”) and nouns (change “a Kleenex” to “a tissue,” although there’s more leeway in, say, fiction dialogue), and omit the bug. This should be enough to avoid getting a nastygram from the trademark holder.

Why shouldn’t he?

I agree that he is under no legal obligation, but he is not required not to, either. Unless I want to be annoying to the company, why wouldn’t I indicate the trademark? Sure it’s the company’s obligation to enforce it, but having them send a letter to everyone who writes Google doesn’t seem to me to be the point of the system. That’s just there to handle the cases when citizen’s fail to indicate the trademark, no?

I guess what I’m asking: Is it –
(a) A citizen is supposed never to use a trademark symbol, or
(b) A citizen is not required to use a trademark symbol.

I think it’s (b), but there seems to be a sentiment that using it ever is simply wrong. If that’s the claim, cite?

On preview: a legal cite. I see the CMS discourages the use, but I disagree with CMS on several style issues. Fortunately there are other style manuals. :slight_smile:

Yes, but what if you are, for whatever reason, using these terms as generics. Sure, CMS discourages you from using the word “Xerox” as a verb, but it’s perfectly natural to come across, say, a part of a character’s dialogue where xerox is being used as a colloquialism. I mean, you wouldn’t change the dialogue? Similarly, I think if one were to use kleenex in the generic sense, not specifically referring to the Kleenex brand of tissues, my instinct would be to use the lower case. Sure, it’s a bit naughty according to the Chicago Manual of Style, but there’s plenty of cases where I would say such a style is okay, mostly in fiction writing and more informal styles of prose.

I don’t want to seem picky but could you provide a cite for that? I’ve never heard anyone use it to mean anything other than “to use the google search engine”. I googled it and could not find any definition that allows for other search engines.