The idea for this week’s blog post comes courtesy of another intellectual property attorney here in St. Louis (thanks Emmett!) who emailed me asking why Google uses a “TM” next to its name rather than the more appropriate ® designation.
Before I even attempt to answer that question (and I’m not really sure that I can), it’s probably best that I first explain the difference between the “TM” and the ®. The ® is a symbol that may only be legally used in connection with a federally registered trademark. It may not be used until the trademark registration is granted by the Trademark Office and is meant to give fair notice to consumers and competitors that the particular trademark is federally registered. Furthermore, as a practical matter, the ® acts as a strong deterrent to those who might be thinking about adopting an identical or confusingly similar trademark and, in the minds of some consumers, the ® may lend some credence to the product/service with which the trademark is used. Having said that, the improper use of the ® with unregistered trademarks is extremely widespread, especially by small businesses that are unfamiliar with the federal trademark laws. So, just because you see a ® next to a trademark, don’t assume that the trademark is actually registered. There’s a pretty decent chance that it’s not.
On the other hand, the TM (which obviously stands for “trademark”) has zero legal significance whatsoever. It is merely a convention that was started many years ago to indicate that trademark rights are claimed in a particular name, logo, or slogan. Most often, you see the TM used in association with unregistered trademarks or trademarks that are currently pending with the Trademark Office but have not yet matured into registered trademarks. The TM does not mean that the owner of the trademark actually possesses any trademark rights or that the trademark doesn’t infringe the rights of another trademark owner. That’s not to say that the TM shouldn’t be utilized because it may still deter some people from adopting the same or similar trademark. But, probably not. And because the TM has no real significance, feel free to use it next to your personal name or in random places throughout™ anything you write.
Although use of the TM or ® is completely optional, the Lanham Act (which is the primary federal trademark law) gives a valuable incentive to owners of registered trademarks to use the ®. Although I’m not usually into reprinting incomprehensible federal statutes, below you will see that I have made an exception and pasted the text of 15 U.S.C. § 1111, which deals with the ® and the consequences for not using it:
Notwithstanding the provisions of section 1072 of this title, a registrant of a mark registered in the Patent and Trademark Office may give notice that his mark is registered by displaying with the mark the words “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the letter R enclosed within a circle, thus ®; and in any suit for infringement under this chapter by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration.
When translated into English, this law states that an owner of a federally registered trademark cannot recover any damages or profits from an infringer if the ® wasn’t being used unless the owner can prove that the infringer had actual notice of the federal registration (yeah, good luck proving that). So, even though a federal registration functions as constructive notice to the entire world (because the registration could be easily searched for and found in the Trademark Office’s records), the ® must still be used if a registered trademark owner wants to recover monetary compensation from a potential infringer. And who doesn’t want take a dirty little infringer to the cleaners?
Now that all of you are educated about proper trademark notice, let’s return to Emmett’s question about why Google doesn’t use the ® next to many of its well-known trademarks. If you browse the federal trademark records, you will find that Google owns registrations for GOOGLE, GMAIL, PICASA, YOUTUBE, ADWORDS, BLOGGER, and DOUBLECLICK. However, as the screen shots below indicate, Google uses only the TM or nothing at all next to these marks:
To be honest, I am dumbfounded as to why Google doesn’t use proper trademark notice, most notably when it comes to the word GOOGLE. You would think that Google would do everything it possibly could to protect its most valuable trademark and to ensure that the public continues to recognize it as a trademark and not as a generic synonym for the word “search” (e.g. “I will Google that”). Oftentimes, registered trademark owners shun the ® because it looks too stodgy and “corporate” (imagine the rock band Rage Against the Machine using the ® next to its name, which it could since it owns a registration for it). So, perhaps Google is simply attempting to preserve its image as a fun and hip company by not using the ®. And, let’s face it, although the monetary incentive to use the ® is important for smaller businesses, I’m pretty sure Google could afford to take every person, company, and organization on this planet to court for trademark infringement ten times over without regard to whether it could be awarded a single dime by a judge or jury.
Still, I strongly believe that all registered trademark owners (including Google) should use the ® whenever possible, especially those who may not have the financial means to bring an infringement lawsuit without knowing that an award of monetary damages and the infringer’s profits is on the table. So, Google®, if you are reading this, I would be glad to advise you further on proper use of trademark notice. Just give Morris Turek™ a call.