Trademarks: caveat scriptor.

Of the many considerations we have to address in preparing documentation, accuracy of information is the most vital. Without it, the document that is perfect in all other respects is useless.

Some of the more elusive facts that must be pinned down during research pertain to trademarked terms. Is the term actually a trademark? Who owns the trademark? Is it registered? Consider the following example:

You can run PCTOOLS on an IBM PC that supports an EGA, VGA, or Matrox graphics adapter card.

Do you know which terms in the example are trademarks? Do you know whether they are registered and how to determine the owners?

I am intentionally leaving out the appropriate marks in this example to highlight the questions involved. The trademarks are acknowledged at the end of the article, along with any other marks that are used.

This article provides some guidelines that may help you in this area of research. Please note, however, that this subject is a part of trademark law, and it is clouded by all those well-known subtleties of the legal world. I am not trained in law, and you need to consider my suggestions in that light.

Understanding Some Terms

What is a Trademark? A company can create a design or device that can be identified with a product or family of products. The design/device is the trademark, and because the company can legally acquire exclusive rights to the use of the trademark, the company, the product, and even a suggestion of the nature and quality of the product can become closely associated within the perception of the marketplace. Who originally creates or designs the trademark is unimportant. Rather, determination of ownership in a court of law is based on who first uses the trademark in commerce (Kutten 1992).

A company distinguishes its mark with the superscripted |TM~ symbol. For example, Windows|TM~ is a trademark used by the Microsoft Corporation. The |TM~ indicates that Microsoft claims Windows as a trademark. In the United States, this gives the company certain rights of ownership under common law. However, the symbol itself does not convey the rights; it simply indicates that the trademark owner claims rights of ownership (Kutten 1992). In many foreign countries, on the other hand, simply proclaiming ownership and using the |TM~ designation confers little or no legal protection (personal communication from G.J. Elman, J.D.).

What is a Registered Trademark? A company can file for registration of its trademark under the Trademark Act of 1946 (the Lanham Act). Registration provides further legal protection for claim of ownership in the United States, and it is essential for recognition of that ownership in foreign countries. For interstate commerce and national registration, the company files an application for registration with the U.S. Patent and Trademark Office. This can be a lengthy process, sometimes requiring years to complete. It can be complicated by many actions, including opposition by another company that may have its own claim to the proposed trademark. Registration can be made at the level of individual states for a product that is limited to intrastate marketing.

For state registration, the company continues to use the |TM~ symbol for the trademark, just as for a common law claim. For national registration, the company must continue to use the trademark with the |TM~ symbol until the registration is complete. After national registration, the |R~ symbol is used to indicate that the trademark has been registered with the U.S. Patent and Trademark Office (Kutten 1992).

A trademark is registered under one or more classes according to the type of product with which it is associated. In the past, products have been registered with the U.S. Patent and Trademark Office under categories of U.S. classes. In recent years, the international schedule has become the primary means by which products are now grouped. Currently, 42 international categories exist, ranging from Chemicals (1), Paints (2), and Cosmetics (3) to Education and Entertainment (41) and Miscellaneous (42).

Are There Other Types of Trademarks? Four other types of marks frequently appear in the literature.

* The service mark|SM~ indicates that the product is intangible, such as a service or transportation. Common examples of service marks are TWA|SM~ and Hertz|SM~ (Davis 1985).

* A business may adopt a trade name as a means of identification. As such, it is not a trademark unless it also identifies individual products. International Business Machines Incorporated uses the trade name IBM|R~ to identify its products (Kutten 1992).

* The certification mark is used with a product by a business, other than the product owner, to indicate quality or mode of manufacture, material, origin, and so on. The UL|R~ mark of Underwriter Laboratories is an example (Davis 1985).

* The trademark and design can consist of stylized text, or a graphic design, or a combination of the two. The familiar disk with horizontal bands used by American Telephone and Telegraph Company comes to mind.

Be aware: Although it may be tempting to add a flourish to one of your presentations by incorporating one of these graphic designs into an overhead transparency/foil, you need to acknowledge the owner to avoid the possible implication that the design is your own.

What is an Assigned Trademark? A company can sell a registered trademark. If the appropriate legal transfer is done and the U.S. Patent and Trademark Office is notified accordingly, the trademark is assigned to the new owner.

Avoiding Some of the Caveats

Owner Verification. It is best to consult an official source for your trademark information. Do not trust trademark acknowledgments that you see in the literature; they are often wrong, noting trademarks as registered when they are not, citing terms as trademarks when they are not, acknowledging the incorrect owner, etc.

Do not make a guess; you could easily be wrong. Consider, for example, whether 386 is a trademark. The Intel Corporation could be successful in registering 80386 as a trademark, but descriptive terms cannot be registered trademarks. Therefore, Novell, Inc., cannot trademark the 386 in NetWare 386 because 386 is a descriptive term that indicates the software is compatible with the 80386 microprocessor (Kutten 1992). As of this writing, you would not use the |R~ symbol after either 80386 or 386. (The last time I checked one of my sources, The Trademark Register of the United States, 80386 was not listed as a registered trademark.) However, NetWare|R~ is a registered trademark of Novell, Inc.

Usage. Although descriptive terms cannot be registered trademarks, always use a trademark as a descriptive modifier. That is, use a trademark as an adjective or adverb, never as a noun or verb. For example, your computer supports the CP/M|R~ operating system; it does not run CP/M. You make a photocopy of a paper on a Xerox|R~ machine; you do not xerox the paper. If a trademark becomes a part of the common vernacular, the owner loses its exclusive ownership. Examples of this include aspirin and the thermos (Davis 1985).

Trademark Assignment. If a business is sold in gross, all trademarks are assumed to be transferred to the buyer, even if trademarks are not specifically addressed in the agreement of sale (Kutten 1992).

For the technical writer, assignment can sometimes create difficulties in determining who the owner is. Often you are simply unaware of the assignment. Perhaps the legal transfer is slow to take place, or your source of trademark information is slow to update its files. For example, did you know that Norton Utilities|R~ is now a registered trademark (assigned) of the Symantec Corporation? Depending upon your information source, however, Peter Norton Computing, Inc., may still be the listed owner.

The agreement of sale may also present complications, particularly if only a portion of the business is sold. Some trademarks may be transferred to the new owner. Other trademarks may be licensed to the new owner, in which case, ownership remains with the original owner.

Trademark Uniqueness. Contrary to what seems intuitive, more than one company can claim the same trademark when the products are sufficiently different to prevent confusion. In fact, the likelihood of confusion is the key determining factor in many trademark infringement cases, although many issues are weighed in making the determination (Fletcher and Kera 1991).

Consider the example of the pet food trademark Cadillac|R~. It is unlikely that this product could be confused with the automobile of the same name. Therefore, in this case there is no trademark infringement, and both the General Motors Corporation and Cadillac Pet Foods, Inc., are registered owners of the trademark Cadillac (personal communication from G.J. Elman, J.D.).

Mead Data Central, Inc., owner of the database service Lexis|R~, sued Toyota Motor Sales, U.S.A., Inc., after the automobile Lexus|R~ was introduced. One argument used to support the lawsuit was that the exclusivity of Lexis was diluted (personal communication from G.J. Elman, J.D.). A supporting argument for Toyota was that Lexis trademark exclusivity could not be diluted when only 1% of the general public had heard of the database service. In this case, the database service lost the lawsuit. However, you can see that the definition of trademark law can be very much open to interpretation.

Sometimes two products may appear to be very similar and still legally have the same trademark. As confusing as this can be to you as a writer, the best recourse is to consult an official source of trademark information to help resolve such questions.

Consulting Sources

You can refer to many sources of trademark information. They vary considerably in accuracy, ease of access, and cost. I describe below some of the more useful sources that I have discovered.

Official Gazette of the United States Patent and Trademark Office (Trademarks). This periodical is published weekly by the U.S. Patent and Trademark Office. The contents include registered trademarks that have been renewed, removed from the register, and published for opposition. The owner and the date of registration are also listed.

Although an official document, the accuracy of which I do not question, the Official Gazette alone cannot help you determine a trademark's owner unless you also know the trademark's registration number and date of registration and the class under which it was registered. Moreover, although I have determined original registrants through the Official Gazette, I have had little success in determining assigned owners through this publication.

Trademark Register of the United States. This periodical is published annually and is a listing of the current trademarks registered and renewed in the U.S. Patent and Trademark Office. The information provided includes the registration number, the date of registration, and the U.S. and international classes in which the trademark is registered. The owner is not listed, however. This fact and the relatively long update time are the major drawbacks of this periodical.

Trademark Register of the United States (online version). Accessed with a computer and modem, this database lists the owner, registration number, registration date, and U.S. and international classes for a trademark and a description of the product type. This information source is very easy to use, includes all the pertinent information needed to acknowledge a trademark owner, and is updated more frequently than the published volume. The only disadvantages I have noted are the cost, currently $2/minute (use a fast modem), and the fact that updates are not done as frequently as for other databases I have probed.

TrademarkScan|SM~. This online database is provided by International Thomson Information, Inc., of North Quincy, Massachusetts. I have used this database only three times, accessing it with a computer and modem through a CompuServe|SM~ gateway. From the brief experience, my impression is that this information source is accurate, complete, and relatively up to date. It is also useful for common-law trademarks, as well as for registered trademarks. It is expensive for the individual, however. The cost varies depending on how you access the database.

Resolving the Example

In the example introducing this article, I used several trademarks that require acknowledgment. Do you know which ones these are--PCTOOLS? IBM? PC? EGA? VGA? Matrox? Perhaps you know that IBM is a registered trademark (International Business Machines Incorporated), as is Matrox (Matrox Electronic Systems, Ltd). Did you know that Canon Kabushiki Kaisha is the registered owner of PC, or that PCTOOLS is a trademark of Central Point Software, Inc., but is not registered?

Sanford Branscomb writes documentation for industrial hardware and software products that are produced by Siemens Industrial Automation, Inc. In addition to his writing projects, he is working on plans to initiate the following programs within his group: a formal manual usability testing procedure, online help documentation, and an online database of change requests for published documentation. He has degrees from Duke University (B.S.) and the University of Maryland (M.S.).

REFERENCES

Davis, G. Gervaise III, Esq. 1985. Software protection. New York: Van Nostrand Reinhold Co.

Fletcher, Anthony L., and David J. Kera. 1991. Trademark law handbook, 1991 edition. New York: Clark Boardman Co.

Kutten L.J. 1992. Computer software--protection/liability/law/forms. New York: Clark, Boardman, Callaghan.

REFERENCED TRADEMARKS

The following trademark information is taken from an online search of the Trademark Register of the United States.

Cadillac is a registered trademark of Cadillac Pet Foods, Inc. (international class 31), and of General Motors Corporation (international class 12).

CompuServe is a registered service mark of Compuserve Incorporated.

Hertz is a registered service mark of Hertz System, Inc.

IBM is a registered trademark of International Business Machines Incorporated.

Lexis is a registered service mark of Mead Data Central, Inc.

Lexus is a registered trademark of Toyota Jidosha Kabushiki Kaisha Aichi-Ken.

Matrox is registered trademark of Matrox Electronic Systems, Ltd.

NetWare is a registered trademark of Novell, Inc.

PC is a registered trademark of Canon Kabushiki Kaisha.

TrademarkScan is a registered service mark of International Thomson Information, Inc.

TWA is a registered service mark of Trans World Airlines.

UL is a registered certification mark of Underwriters Laboratories.

Xerox is a registered trademark of Xerox Corporation.

The following trademark information is taken from a search of the Trademark Register of the United States.

CP/M is a registered trademark of Digital Research, Inc.

The following trademark information, for unregistered trademarks, is based on claims by the listed owners.

PCTOOLS is a trademark of Central Point Software, Inc.

Windows is a trademark of Microsoft Corporation.

The following trademark information is taken from an online search of TrademarkScan|SM~.

Norton Utilities is a registered trademark (assigned) of the Symantec Corporation.