Table talk
My husband is a trademark litigator. I am a trademark prosecutor. Naturally, many of our conversations revolve around trademarks – so much so that our daughters routinely pass judgment on trademarks and business names we see. Yesterday, while we were strolling in the retail paradise known as Bellevue, Washington, one of the girls looked across the street and said “The Container Store – duh, what a dumb name!” Shepping nachas? ( http://www.answers.com/topic/nachas ) You’d better believe it!
But back to the husband – he’s as opinionated as I am, and today’s argument was whether or not a company that has not yet but soon will procure a trademark registration needs to put the ™ designation on its packaging for a product soon to be released. I said no, and he basically called me an idiot. His argument is that the company needs to “bug” (au courant trademark lingo) the mark to show it’s claiming trademark rights. My argument, drawing perhaps from the wisdom of the aforementioned daughter, is “Duh.” Of course they’re claiming trademark rights, they named the product. Once again, we agree to disagree.
Here’s the deal though – if the product at issue is packaged in a box (and this one will be), it’s easy to indicate a claim to trademark rights elsewhere. The copyright notice line is a great place for it – you can say “©2007 XYZ Corp. All rights reserved. The XYZ and XYZ and Design trademarks are trademarks or registered trademarks of XYZ Corp.” That’s all – no need to clutter up the fancy logo with the ugly ™ that will soon have to be replaced anyway.
So, wiseguy, you’re thinking, where the hell do you get authority for that lofty pronouncement? Well, when in doubt, I rely on my trademark notice oracle: Chanel (http://www.chanel.com/): They don’t mess up their website or packaging or their products themselves with the ® or the ™. The website’s privacy and legal notices section has a paragraph about their claim of ownership of their marks, as do the inserts in their makeup packaging. So their products have clean lines, copy in all caps, and every time I see them the Pavlovian purchase reflex kicks in – like with this:
A quick check of the PTO website shows that CHANEL and PRECISION are registered, and that SUBLIMAGE will likely register soon. I don’t think the lack of bugging is at all getting in their way.
Hey, Jessica, I'm enjoying your blog. Tell Mark I'm on your side.
Also, I've read Leo Rosten, so I'm getting the Yiddish as well.
See you Tuesday.
bob
Reply to this
What a fun blog! It, in of itself, is a great branding strategy.
Even though I may be a tm litigator, I am also on your side. When's the last time you've heard of any trademark case or TTAB opposition come down to the "critical fact" that the alleged mark owner had not used the "tm" symbol on a newly appropriated-but-not-yet-registered mark? Formalities are things of the past, and while perhaps there's a smidgen (the technical legal term) of law to say that a potential infringer may not be liable for certain levels of damages due to a mark owner's failure to explicitly tell the world that _this particular_ mark is believed to be a trademark, that's way overshadowed by the rest of the trademark universe wherein you acquire rights by use, not formalities.
Thumb your nose at your hubby one more time!
MSP-Tm
Reply to this
Hi Jessica,
Neat blog! Please feel free to delete this comment as soon as you have read it-- I just wanted to give you the heads-up that your blog does not display properly in Opera 9.2, though it displays in IE and Firefox just fine.
The text of the article begins right below your right-hand... toolbar?... so I'm imagining it's related to that.
You shouldn't be alarmed. Opera only has like a 1% share of the browser market. But in case you're a picky person, I thought I should let you know.
Continue the great work, delete this comment or moderate it as necessary. Interesting info on the "tm" logo... I didn't know that! When referring to third party trademarks, their guidelines usually specify using the "tm" for at least the first occurrence. (Blackberry^TM, for example)... Now that I know it's not strictly necessary, I'm going to be wishing those companies would stipulate that as long as their rights are protected somewhere in your document (as per your Chanel example), that there needs not be a "TM". One can hope.
Greg
Reply to this