Is it necessary to include the circled r symbol after a trademarked word in discussion groups/comments on social media sites?
Our clients frequently discuss various topics about our courses on Facebook, LinkedIn, etc. In those discussions they use words/phrases we have trademarked. Should we insist they put the circled r symbol after our trademarked words/phrases in these types of formats?
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You should mention it at least once the first time the registered mark is mentioned. It is good to use this each time you mention the mark, but many marketers don't like the practice, so you should do at least the first time.
Bao Tran
408-528-7490
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It is not "necessary," especially since the use is not by you but instead by clients or social media users. However, since the use is closely affiliated with your brand, it would be advisable to remind your customers and social medial users regarding proper use of the trademark(s) from time to time. This strengthens your protection in the trademark and helps ensure that everyone understands that the trademark(s) is proprietary and something you are protecting.
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You really can't control what third parties do, the important thing is that when you use the trademark, you use the registration symbol (circled-R)- I assume these are registered trademarks although you do not specify. As Erik says, it does not hurt to remind your clients that these are your proprietary trademarks, but you are never going to get people in a forum to use the registration symbol with all your trademarks.
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Yes, the words / phrases are registered trademarks.
Thank you for the advice.
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When you say "we have trademarked" a term, do you mean that you have a US trademark registration? If not, there is no issue, as neither you nor they should be using the (R) symbol in any context.
With regard to discussions of registered trademarks on Facebook, etc. it would be great if your clients indicated that you owned the mark, but as long as they are using the term correctly--i.e. to identify the goods/services they are actually talking about--no trademark infringement is taking place and their usage is not actionable. For example, if I post on Facebook that "I like Coke better than Pepsi," I am using the marks "Coke" and "Pepsi" to correctly identify "Coke" and "Pepsi" products, and so my usage is not actionable by either Coke or Pepsi or anybody else.
Kevin W. Grierson, Esq.
Admitted to practice in Virginia and before the United States Patent and Trademark Office
Direct: 757.726.7799| Fax: 866.521.5663|grierson@fsblegal.com| fsblegal.com
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The purpose of inserting the ® symbol is to bring notice to 3rd parties that the mark has been registered with the US Trademark Office. In event there's a trademark infringement, it's always good to show to the courts that we're proactively protecting our trademark, such as using the ®. However, sometimes parties may drop the ® for aesthetic or convenience reasons. A solution may be to "encourage" clients to use the symbol where possible. This way, clients are aware, but do not feel forced.
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Using the circle-R symbol on the first use of each registered mark in a short work is a sufficient practice (else, once per chapter or section in a longer work), and capitalizing the mark for every use is important. Also have them include a footnote that ---, ----, -----, and ------- are registered trademarks of your company. What is worst is if people use your marks as the generic names of the products or services, as “please hand me a kleenex” when they want a tissue of any brand – come down hard on such misuses, by notice and cease and desist demands. Escalator, Formica, Jacuzzi, and other marks have or may lose their registrations due to widespread generic uses; Xerox and Kleenex marks are rigidly policed against such fates. Best wishes.
John R. Crossan
Crossan Intellectual Property Law, LLC
444 N. Michigan Ave., #2600, Chicago, IL 60611-3903
Direct: 312-670-6860
Fax: 312-264-0770
Cell: 312-498-2365
jrc@crossaniplaw.com
www.crossaniplaw.com