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Trade-Mark Protection

Kirsten Cowan

While preparing to write this article, I hemmed and hawed about whether to use my Mac or a bic. Finally I threw on my walkman and headed out to grab a Starbucks.

This is the way that many of us talk. When it comes to the published word however, a whole world of intellectual property rights need to be respected in a way few of us ever consider in conversation.

Trade-mark protection is serious business. If a corporation does not demonstrate that it is actively protecting its trade-mark from misuse, it can stand to lose ownership. This is not a theoretical happening. Examples of lost trade-marks that are now generic terms for items include aspirin, yo-yo and corn flakes. Considering the huge sums corporations spend on ensuring that their trade-mark represents certain values to the public, namely quality, reliability and so on, any public use of their name that threatens to dilute that public image is going to be taken very seriously.

Corporations may seem to advertise with the express purpose of making their brand name synonymous with the item. COKE®, NIKE® and WALKMAN® are examples of brand names that are now household words for cola, running shoes and personal stereos. Although this wide recognition is part of a trade-mark's success, it cannot be allowed to go unchallenged in published material, lest the company lose its rights.

In order to avoid an unpleasant run-in with a company protecting its trade-mark, a few techniques should be applied whenever you write for publication - in print or electronically.

In order to correctly express the sentiments of my opening paragraph, I should have said something like this:

While preparing to write this article, I hemmed and hawed about whether to use my MACINTOSH® computer or a BIC® brand ballpoint pen. Finally I threw on my SONY® WALKMAN® portable cassette player and headed out to grab a STARBUCKS® coffee.

This is not exactly great prose. In writing for publication authors must balance the legal rights of trade-mark owners with the flow of writing. Becoming familiar with generic equivalents is a good place to start. Photocopy instead of XEROX® and use a tissue, not a KLEENEX®. If it really is a specific brand you are referring to, there are some things to keep in mind with most copyrighted names. It's KLEENEX® tissue for example, not just a KLEENEX®. Similarly, XEROX®, one of the most famous examples, is not a verb. You cannot XEROX® a document. You can however copy it on a XEROX® brand photocopier.

Trade-marks are usually written in a specific style or typeface that identifies them, e.g.:

In order to avoid diluting the visual impact, trade-marks should usually be written in uppercase:

Trade-marks are generally identified with a small raised symbol. The ubiquitous ® indicates a registered trade-mark. The other common symbol, , refers to an unregistered trade-mark. Unregistered trade-marks enjoy protection along with registered ones under Canada's intellectual property laws.

Trade-marks cannot be pluralized. "The victim's NIKES® were stolen." is not correct. "The victim's NIKE® brand running shoes were stolen." is correct. Of course it is up to you to weigh the necessity of even mentioning the trade-mark. Consider whether you might be unintentionally implying something about the trade-marked product that could get you into legal hot water. Use of a generic name may be the appropriate style.

Brand names are not the only trade-mark protected items of concern to writers. Because slogans can also be protected, writers must be vigilant to avoid misuse. What seems like an ironic turn of phrase to you could be a copyright infringement.

Correct use of trade-marks is remarkably simple. Most companies promote the correct use of their trade-marks, and will be more than happy to supply trade-mark usage sheets to journalists. After all, it's in their interest to avoid going the way of the escalator, kerosene or cellophane - all lost trade-marks.

Published in Sources, Number 45, Winter 2000.

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