DuetsBlog Collaborations in Creativity & the Law

What Does “Trademarked” Mean to You?

Posted in Marketing, Trademarks

 

Thumbnail for version as of 15:21, 6 September 2009           Thumbnail for version as of 14:28, 28 October 2007  Thumbnail for version as of 05:55, 3 December 2007

More than a few trademark types cringe when their clients or others say things like "let’s trademark it," "they didn’t trademark their logo," or "we don’t want to trademark this name," and, when they ask questions like "is it trademarked?" or "is that trademarked software?" or "did we ever trademark our logo?" or "should we be trademarking this packaging?"

Indeed, some have written: “’Trademark’ is not a verb. There is no such thing as ‘trademarking’ a word or phrase." Similar views are expressed here, here, and here.

Perhaps any cringing may result from the fact that the Lanham Act – the federal trademark statute — defines the word "trademark" as a noun, not a verb or adjective:

The term "trademark" includes any word, name, symbol, or device, or any combination thereof –

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Section 45 of Lanham Act, 15 U.S.C. 1127.

Turns out though, the words "trademark," "trademarked," and "trademarking," are recognized words with established verb meanings that have formed part of the English language: "(1) To label (a product) with proprietary identification; and (2) to register (something) as a trademark." Moreover, the word "trademarked" has an established adjective meaning too: "labeled with proprietary (and legally registered) identification guaranteeing exclusive use; ‘trademarked goods’".

From my perspective, there is no need for cringing or even correction, just further inquiry into how the words "trademark," "trademarked," and "trademarking" are being used.

Given the various definitions for these words, the speaker might mean labeling a product or advertising material, utilizing or marking such materials with the appropriate trademark notice or symbol, registering a trademark or service mark, or perhaps, all of the above. Since the described actions (labeling and registering) are quite distinct, it becomes important to seek clarity on the speaker’s intended meaning.

For example, when referring to labeling with proprietary notices, the TM symbol does not require any registration for its proper use, and its use does not even imply registration has been sought or achieved. It simply communicates that the owner of the trademark in question views the claimed mark as proprietary. Likewise, when the SM symbol is used, no registration is required, and none is implied by its use, it simply means the claimed service mark is intended by the owner to be proprietary.

On the other hand, federal registration with the United States Trademark Office is a requirement before one can use the above-depicted "R within the Circle" symbol in the U.S., and it means that the mark in question (either a trademark for goods, or a service mark for services) actually has been federally-registered — having a pending registration application is not enough, the actual Certificate of Registration must have issued for the use to be proper and lawful.

Keep in mind, that the word "trademark" can have meaning either a noun or verb, should not be confused with our previous discussion of whether verbing trademarks and brands is a good idea: "Just so you know, in general, the law views brand names and trademarks as adjectives, not nouns or verbs, so kudos to Nancy Friedman of Fritinancy to recognize this important point." [For my previous Just Verb It? Series, see: Part I, Part II, and Part III].