Company Name (TM)

Hi
I see the 'TM' text used by some company names, some of the time. In the past I've had some brands request I add TM next to their company name on our site. But it all seems very inconsistent.
When should we use TM next to our company name? On every company name occurrence on the site?
Should we insist or encourage others use the TM text?
If our company name has generic words e.g. lets pretend our company was actually called 'Company Name', should we still use the TM in the same or different fashion?
Our company logo contains text and a logo image. Should we add TM to the logo, and if so does the TM go next to the logo text or by the logo image?

Thanks

 

Most recommend using TM next to name immediately - prior to receipt. Use it on emails and correspondence. Later, legally you can indicate when you started using the "tm" on your business dealings. It doesn't make sense to me - but I have heard attorneys suggest an action.

 

Thanks for comments, what do you mean 'prior to receipt'? This isn't a registered trademark.

 

There are a lot of people who recommend using a trademark prior to officially obtaining a legal trademark. If you can show a correspondence from 1992 with a TM next to the name, you show an intent or proof that you were operating under a trademark. It doesn't make sense to me - from a common sense view - but it is what is recommended by some people in USA.

 

To protect a trademark through actual use requires the user to place a superscript TM after the Trademark (often called a common law trademark.) The owner of a registered trademark uses the symbol ® to indicate a Registered Trademark.

Trademark owners may commence legal proceedings to prevent unauthorized use of their trademark under the Latham Act. While the level of protection for a registered trademark is greater than that of a common law trademark, any trademark owner may pursue their property rights and prevent the unauthorized use of their trademark by others. Factors affecting the owner’s rights include whether the trademark is registered, the similarity of the trademarks and the actual products, and whether the trademark is well known. The final test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin.

 

So in the example described above should every time Company Name be shown on company website or company literature it be shown as Company Name TM?

If the TM is only used in some occurrences of the company name being shown on the website, what are the implications?

And if another website references the company should a request be made that the TM be included in the name (as has happened in a few circumstances on a site I've operated)?

Thanks for the information.

 

I agree with you for the most part and I have had this debate on this forum before. The one thing I disagree with is that is optional to add a superscript TM to a mark you are claiming as a trademark. As you know trademarks are a race to the marketplace and first use in commerce is what controls. There appears to be no downside to using a superscript TM but there is also no legal requirement that you do so.

I would certainly recommend that anyone who is claiming a trademark in a word or logo place a superscript TM on that mark.

 

that's great, thanks. However I just read up about getting a Registered mark and the reason this won't be pursued is because the generic terms won't be accepted. On the basis that the name is unregisterable, can/should TM still be used? One of the advantages of using TM is it distinguishes the name which in this example is Company Name (with TM) from other use and occurrences of that same generic text, which may not be referring to the brand name.

 

If the intended mark is generic and not worthy of trademark protection than using a TM will not offer you any either.

I am not sure about the whole distinguishing thing. I happen to be a big believer that company names and domain names matter very little and it is the business or service behind them that matter.

Wal-mart - named after owner Sam Walton
McDonalds - a restaurant opened by brothers Richard and Maurice McDonald

those just happen to have ended up being exceptionally large business with rather bland company names coming from their founders.

 

If it is possible to register a mark against the logo, and that may be a future action, is their any relevance on using TM in the interim.
Incidentally, can one register a graphic mark which is generic text and a logo, or is the graphic intended for graphical logo only?
Thanks

 

Trademark law is not my area of practice. I believe a graphic, which within it contains some generic text, may still be protectable by trademark. I would certainly error on the side of using a TM on the logo.

Also, just because a word is generic does not mean it can't be a trademark. The words "apple" and "shell" are generic. But when used by a computer company and an oil company respectively, they are worthy of trademark protection. Someone selling apples could not get that trademark as it would be generic, but it is not generic for a computer company.

 

Yeah thats perfectly fine. Under UK Law...
A trade mark must only serve as an indication of the origin of the goods or services which the trade mark represents.
This means that all trade marks must be capable of being represented graphicallys, either by lines, characters, or any other graphical representation.

In fact, there have been registrations of trade marks as a color. Take the Liebel (ORANGE) registration. In UK law the trade mark must be... a graphic representation which is : clear, precise, self-contained, easily accessible, intelligible, durable and objective. (Thats the Sieckmann case if you wanted to Google it)
Graphical logos with text would be easier to register, then just the graphics by itself.