Can the symbol be placed anywhere to the right of the logo based on where it looks best even though it is typically seen in the upper right corner?

Lake Tahoe

By convention, the trademark symbol is typically placed to the upper right of words and to the lower right of symbols. However, the purpose of the trademark symbol is to put competitors on notice of your claim to trademark rights. Any placement of the trademark symbol that does not disrupt this purpose should be sufficient.

Please review the following article for more information about placement of the trademark symbol:

[http://lahserpatent.com/tm-symbol](How to use the ™ symbol)

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Can the trademark symbol be placed anywhere near the logo? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

Another band is using a name I trademarked how do I go from here?

Hello Andrew,

So basically I’ve trademarked the name “BALDERDASH” in the U.S.A. under the international class code 041. There’s another band from NY and one from MI who are both using the name “BALDERDASH”. How to I pursue them not to use the name?

~ Montreal, Quebec, Canada

Hi Montreal,

There are a variety of ways that you can enforce a trademark. The appropriate action will depend on a variety of factors. Here are some:

1) How much actual confusion is there in the marketplace? 2) Who has been using the trademark longer, and, how has the trademark been used? 3) Where is the trademark being used? 4) What other relationships does the infringer have, for example, who is the record label? 5) what budget is available? 6) is there import or export of confusing goods (records, t-shirts)?

Usually, you begin by investigating the circumstances and performing an analysis to understand what rights you have based on the facts that you can uncover.

Enforcement can take on a variety of forms, for example, sending a cease and desist letter, filing a lawsuit; pursuing an administrative action at the US Trademark Office (or US Customs, if appropriate); UDRP proceedings, and notification of third-parties of infringement.

Good luck.

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Would copyright infringement be made on a design that is shaped like a trademarked image? Please view the two images [Ed: ok, I added two more!]. The first one is the [Ed: famous maker!] trademarked image. The second is an outline of it. Would this be considered copyright infringement?

~ Oregon

John Deer v. Apple

I suspect you wanted to ask, “is it safe for me to use this second image?” Well, as the picture shows, it depends. When I give advice to a client that something is “safe” to do, that is called a clearance opinion or right to use opinion. To give such advice, I usually ask a lot of questions, do research, and come to a legally-sound conclusion that a later judge or jury would respect. Let’s look at a brief overview of the process.

Trademark, Copyright, and Patent? What do they do?

Ok, in a sentence, here is the purpose of each. I’m avoiding lawyer words, so, please, keep in mind, these are not the precise legal definitions.

1. Patents prevent competitors from profiting on the usefulness of a new invention: if it is not new, no protection; if it is not useful, no protection; if it is not an invention, no protection.
2. Trademarks prevent customers from becoming confused about who is selling what to whom. (Yup, read it twice.)
3. Copyrights prevent impermissible copying of the creative efforts of others.

I am going to assume that you are more concerned about trademark infringement, so, I’m only going to describe the analysis for trademarks. The copyright infringement analysis is different. This makes sense because the purpose of copyright is different from the purpose of trademark.

Trademark Infringement Step 1: Are there trademark rights?

With the John Deer and Apple logo, I think it is safe to assume that there are trademark rights. Anytime anyone sells something to someone, and, there is a mark that indicates the seller or manufacturer, trademark rights happen automatically. This is called common law trademark rights. There can also be federal and state trademark rights. Each level of trademark has different rights and responsibilities. When clearing something, a lawyer has to consider all of the different trademarks, at all of the different levels, potentially in all of the different states (because every state’s law is a little different).

OK, so, for the two pictured examples, we just assume there are trademark rights.

Trademark Infringement Step 2: Is there trademark infringement?

For this step, I would ask questions like this: Is anything being sold with the outline logo? Are any customers becoming confused? What channels of trade do the goods or services flow through? What are the conditions around purchase? There are a series of 13 different factors that courts examine to determine trademark infringement.

As you can see, the outline of the apple logo changed the impression very little — it is still the apple logo. So, it is unlikely that this outline could be used on any good or service even distantly related. However, one might wonder if this outline could be used on a package to sell apples (the kind you eat). Apple, Inc. is not in the grocery business, after all.

The outline of the John Deer logo still has a somewhat distinctive shape. So, for example, perhaps this shape could be used to mark goods or services unrelated to John Deer’s good. On one hand, if you wanted to use this distinctive outline on tractors, well, John Deer might complain. On the other hand, if you wanted to use this outline to sell apples (the kind you eat), you would likely be clear.

Trademark Infringement Step 3: Is the mark famous?

Some marks are famous, and, they get a special right, called “dilution”. Apple and John Deer are both famous. In general, well-known household product names are famous. Dilution means that other uses of the mark, while they do not cause confusion, might tarnish the reputation of the trademark owner. Likely, if our Apple outline was used to sell apples, Apple Inc. would bring a trademark dilution action to prevent this use of the mark.

Trademark Infringement Step 4: Is the use fair?

Finally, trademark law allows for use of a trademark under some circumstances. One example is nominative use, that is, using the trademark to name the product for sale. This is why you can advertise your Mac PowerBook for sale on craiglsist: your use of the trademark is correctly identifying the source of the gently used Mac PowerBook.

Some other types of fair use might include parody, use in fictional works, or editorial review. One key to fair use is that the fair use should not imply any endorsement or sponsorship by the trademark owner.

How Federal courts interpret fair use can vary somewhat from one federal district to another.

Trump Card: Permission

There is a trump card to most intellectual property rights: permission. If you want to use someones trademark, you can always ask for permission. Obtaining permission, unlike the series of questions above, will guarantee that you are respecting the intellectual property of others.

Good luck!

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Could outlining a logo be trademark infringement? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

Can I trademark a symbol that is similar to the red, white and blue MLB and NBA logos? Meaning “Major League X”, something that has not been taken or currently being used but is also associated sports/fitness?

~ New Haven, Connecticut

When you ask the question, this way, it begs for a “NO” answer. You say that the trademarks are similar. You say that they are both used for related sports. So, it sure seems like confusion is likely.

However, the problem is that these are questions of fact. Whether or not your symbol is similar to the MLB or NBA trademark can only be answered by an examination of the precise mark. A question like this is a matter of professional judgment, even for an experienced trademark attorney.

Trademark Likelihood of Confusion

A trademark attorney considers many factors to determine if a trademark is “clear” or “available” to use. These factors include the following list of factors, which tend to prove or disprove that two trademarks are confusingly similar:

1. How similar are the impressions made by the trademarks on consumers? Sounds, appearances, and meanings.
2. What kind and relationship is there between the commercial activity, the goods sold, or the services offered with the trademark?
3. How does the commercial activity happen through the trade channels, that is, how things are sold?
4. What conditions are goods or services purchased under?
5. How famous are the trademarks?
6. How many other and how similar are other trademarks that are in use?
7. Do consumers actually get confused?
8. How long have both trademarks have been used at the same time?
9. What variety of goods are used with the trademarks?
10. What is the relationship in the market between the trademark owners?
11. How effectively has the trademark owner to excluded others from the use of its mark?
12. What is the potential or likelihood of confusion between the trademarks
13. What other facts that show the effect of use of the trademarks?

For more on how these trademark confusingly similar factors apply in a trademark analysis, see In Re Application of E.I. DuPONT DeNEMOURS & Co..

From, this list, you can see that this is a lot to think about. Clearly, the MLB and NBA marks are very famous, and, are used on a wide variety of goods. On the other hand, the marks have elements in common. Whether there is room for another mark, for another sport or fitness, is a good question for a trademark attorney.

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I would like to use one design that incoporates the American Flag within a logo and on several products. The logo/design does not demean or deface the flag and is slight variation of it. Is this allowable and “trademarkable”? Thank you.

It depends. There are many registered trademarks that incorporate aspects of the US flag. If you would like to see some of these registered marks, you can search. Go to USPTO Trademark web site and select “Trademark Electronic Search System”, affectionately known as TESS . Do a “free form” search with the following search terms:

 (24.09.05)[DD] AND LIVE[LD]

You will get a list of over 1600 trademarks that include the stars and stripes as part of the trademark.

An Authentic US Flag will be refused trademark registration.

In general, an authentic US flag cannot be trademarked. Instead, the trademark can simulate or stylize a flag.

1. The flag design is used to form a letter, number, or design.
2. The flag is substantially obscured by words or designs.
3. The design is not in a shape normally seen in flags.
4. The flag design appears in a color different from that normally used in the national flag
5. A significant feature is missing or changed.

For additional examination guidelines for trademarks that incorporation flags, refer to Examination Guide 2-07.

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Can I legally use the TM symbol before I apply for a trademark registration?

Placement and use of the TM symbol

On this page: 1. choosing the correct trademark symbol, 2. placing the tm symbol, 3. understanding the tm symbol and 4. inserting ™ into a document.

Choosing which symbol to use: ™ or ® symbol

There are two symbols commonly used to mark trademarks, they are: ® and ™.

Your business can use the ™ symbol whenever it wishes to claim a trademark. You do not need to file any paperwork or receive permission to use the ™ symbol. Use of the ™ symbol can put the competition on notice that the business considers a mark its trademark.

The ® symbol may ONLY be used AFTER the US Government grants a Federal registration certificate. The ® symbol may not be used while the Federal application is pending. Additionally, the ® symbol may only be used in connection with the goods and services listed on the registration certificate.

Understanding TM symbol purpose: Notify competitors

Even though a trademark symbol is not required, always use the correct trademark symbol with your trademark. Your competitors will be put on notice of your trademark. Then they can respect your intellectual property. Likewise, you can prevent your customers from becoming confused by always respecting the trademarks of others, whether they use the ® or ™ symbol.

Placing the ™ or ® symbol

When using your trademark, place it prominently, so people will notice it immediately. When using your trademark in printed text, use bold, italic, UPPERCASE, or a different font. Make your trademark look different from other, surrounding words. Try to use your trademark as an adjective and not as a noun. For example, “Be hip, show style, wear NIKE^® shoes”.

Either symbol is usually placed to the upper right of the word, logo or other mark. Sometimes companies list the trademarks used in the material along with the owner in the footer of their website or the bottom of a printed page. For example, “Coca-Cola^® and the contour bottle are registered trademarks of The Coca-Cola Company.” Remember, do not claim that your trademark is registered (or use the ® symbol) unless it is actually completed registered with the US Trademark office (www.uspto.gov). Only marks that have been filed, approved and granted the ribbon-original registration certificate by the US Trademark Office may claim to be registered in the US.

However, placement in other nearby or adjacent areas, like sub-scripted, may work well and could look better. The goal is for competitors to see the notification of your trademark claim.

Three ™ or ® placement techniques

There are usually three good ways to notify competitors. They are:

1. Placement of the ™ or ® symbol right near the trademark, every time it is used.
2. Placement of ™ or ® or * (asterisk) or † or (dagger) or ‡ (double dagger) symbol right near the trademark, the first time it is used and having a footnote that describes the trademarks.
3. Setting of all trademark words with bold, italic, UPPERCASE, or a different font, so they are clearly different and providing a footnote that describes the trademarks.

A footnote description might read like this for federally registered marks, when the most prominent use of the trademark is marked with a dagger.

† NIKE and the swoosh logo are registered trademarks of Nike Inc.

Or a footnote description might read like this for marks not federally registered, and, when the trademark is set off from other words with bold and UPPERCASE.

NIKE and the swoosh logo are trademarks of Nike Inc.

Inserting the ® or ™ symbol into your document

Your word processor has an “insert symbol” function or “Special Character” function in the Edit or Insert menu. These functions let you find all sorts of symbols including the ® or ™ symbol. However, I find copy and paste to be faster. That is, you can copy and paste the symbol right from this webpage into your document.

Why you almost never see the ℠ symbol

The ℠ symbol means “service mark”, which indicates services (rather than goods). However, because the abbreviation SM has another, derogatory meaning, it is rarely used. The ™ symbol works identically, and, should be preferred.

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How to use the ® and TM Symbol by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

1. There is a European company named “UYT Widgets”
2. They make widgets sold with the trademarks “UYT 1500″, “UYT 2050″, etc.
3. A US distributor that buys and resells the UYT widgets, obtained a trademark “UYT” under the widget class in the US. The US distributor hopes the US trademark will protect against the manufacturer using another distributor. Can the manufacturer make and sell in the US, with a different distributor, different widgets or the same widgets under a new product name, such as “TRE 1500″ made by “UYT Widgets”

Foremost, if the US distributor would like the exclusive right to distribute the European manufacturer’s widgets, the US distributor needs an exclusive distribution agreement. Trademarks do not confer the exclusive right to sell products. Trademarks protect consumers from becoming confused about who is selling them stuff. Protecting consumers from becoming confused is the real purpose of trademarks — Trademarks only protect the companies that own them indirectly.

Even in the best case scenario, the European manufacturer would always be able to compete (directly or with other distributors) simply by using a different trademark. Why? Because with different trademarks consumers would always be able to determine whether the product was coming from the US distributor or the European manufacturer.

Yet, the best case scenario seems very unlikely. The result in a legal contest between the US distributor and the European manufacturer may depend on with whom the consumer associates the widgets. Determining who the consumer is associating the mark with may depend on many factors. Does the distributor sell the goods to retailers or direct to the public? How are the widgets marked and who does the marking? Who else is distributing the widgets in the US? Is the US distributor involved in any type of quality checking of the widgets? Did the US consumer recognize the UYT mark prior to the US distributor’s sale or resale into the US? Is the US distributor providing any additional services, such as support, warranty work, service contracts, or customization? Why did the European manufacturer allow the registration of the “UYT” mark at the US Trademark Office? Was there any “bad faith” on the part of the US distributor during registration? What other circumstances surround the sale of the widgets? And, even worse, even if every factor was in favor of the US distributor, if the European manufacturer were “surprised” by the US distributor’s claim to a trademark, the cost of proving that the US distributor is correct in a court of law would be a very expensive endeavor. Moreover, the European manufacturer, unless they have an ongoing agreement to sell widgets to the US distributor, could simply stop selling them their widgets.

Why is there so much complexity to this question? Curiously, in most European countries, trademark rights are conferred only by the process of registration. So, a strategy like this may have more predictable consequences in European nations. In the US, trademark rights come from three sources: 1) Federal registration, 2) state registrations and state laws, and 3) rights that “spring” from the common law because of actual sale of the trademarked product. In this situation, there is likely a conflict between these rights at various levels. Furthermore, the US law will consider other circumstances, such as, the circumstances surrounding the registration of a mark.

So, if you are looking for exclusive rights to distribute, get an exclusive distribution agreement. If you wish, have this agreement deal directly with the issue of who will own, enforce and enjoy the US trademark rights to avoid any conflicts. An exclusive distribution agreement that assigns the US trademark rights to the benefit of the US distributor would certainly favor the US distributor. If you are thinking of your trademark claim as a indirect way of gaining the exclusive right or control to sell a product in the US without the consent of the European manufacturer, you are clearly headed for an expensive legal battle that you may not clearly win. Consult your trademark lawyer for advice on how to proceed. Your US registration is a valuable right, but, you must exercise some caution if you have not proceeded with the help of a trademark attorney.

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