January 18, 2013
Is it necessary to recognize third-party trademarks?
An old discussion surfaced this week and I'd like to hear your opinion about it. The question being, is it necessary to recognize the trademarks of third-party brands in materials you create for your clients? (I'm talking about word marks here, not design images.)
First, a disclaimer: The content of this website is offered for informational and educational purposes only — it is not legal advice. I recommend you check into these issues for yourself before taking any action.
My understanding has always been that it is only necessary to recognize the trademark of a third party when there is the potential for confusion or misrepresentation. In that case you mark the text with a trademark declaration (TM), a registered trademark symbol (R), a service mark (SM), or one of the prescribed citations designated by the trademark grantor.
Yes, trademark owners would like us to help them build brand recognition by adding marks, but it is my understanding that actually doing it is more of a courtesy than a requirement.
As you'll see listed below, lots of organizations declare trademarks (TM) and many go to the added expense of register those trademarks (R) with the United States Patent and Trademark Office. They publish very strick-sounding rules about what you must do in order to use their word marks but the question is what are the actual legal requirements. That's where it gets cloudy.
Furthermore, when I do label trademarks, I was instructed a long ago that it was sufficient to mark the first or most prominent use of the word or words only.
That said, I'd like to hear how you handle this issue.
Examples of corporate trademark guidelines: