Can I put an ® next to a logo on a product if only the word is trademarked?

Discussion in 'Legal' started by JPMiddleton, Jun 4, 2015.

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  1. JPMiddleton

    JPMiddleton UKBF Regular Free Member

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    We have a trademark registered for "**** Playing Cards" and we know we can describe it as '****® Playing Cards' with the ® after the initial 4 letter word which is the differentiator.

    My question is, is it possible to put the ® next to the logo on the product or do we need to apply for the visual/image trademark also?
     
    Posted: Jun 4, 2015 By: JPMiddleton Member since: Aug 18, 2011
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  2. RayLevy

    RayLevy UKBF Contributor Free Member

    50 11
    Hi JP

    This is an interesting case.

    Firstly, a brief overview for everyone else who is viewing this post, regarding use of the (R) sign and the TM sign.

    The TM sign stands for 'trademark' and anyone (!) can use this symbol for their trading/business names, whether or not they have been registered as trade marks by the official country register.

    However, the (R) symbol means "REGISTERED". So, only people who have a valid filed trade mark registration can use the (R) symbol. Otherwise, I would be making a false claim that my name is 'registered'.

    NB - it's not considered 'false advertising' to claim 'TM', as all business names are 'trade' 'marks'.

    Now, in your case JP, it appears from your post, that you have registered the initial word, rather than the full phrase (although I'd like to see the trademark register to confirm that). In any event, I don't believe it is false or misleading to place the (R) symbol at the end of the phrase, rather than after the first word.

    Regarding the logo, if your logo is largely just a stylised version of the wording then I don't believe it should be a problem to place the (R) after the logo, for the same reason as above. However, if the logo is significantly designed so that use of the (R) may suggest that the logo itself is the trademark you have registered, then that could be a problem (and you would then need a separate trademark filing if you wanted to use the (R) symbol with it).

    Hope that helps. If you want to get in touch, I'm happy to look at your trade mark text / logo and give you a more considered opinion (free of charge ;)).

    Best regards,
    Ray
     
    Posted: Jun 4, 2015 By: RayLevy Member since: Jun 3, 2015
    #2
  3. F_B

    F_B Guest

    0 0
    You are OK to use the (R) mark in your logo if:
    Your trademark registration is for the text **** only (i.e. not a figurative registration).
    Your logo contains the text **** (it doesn't matter if it is stylised).
    For avoidance of doubt I would recommend placing the (R) next to where that text appears in the logo.

    Trademark registrations are most powerful when for the text of a mark only. This means the registration protects the actual words and not how they are presented. As such you can use the words in any format and still be protected.

    Figurative registrations are far more limiting and, as a general rule, you have to use it in the form you registered it in.

    I recommend you contact a registered trademark attorney who is regulated by IPReg, the regulatory body for Patent and Trademark attorneys in the UK. A trademark attorney will be able to tell you exactly how to use your registration to its full potential.
     
    Posted: Jun 9, 2015 By: F_B Member since: Jan 1, 1970
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  4. dollfingers

    dollfingers UKBF Newcomer Free Member

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    This is the same question I was looking for an answer to. I plan on registering my company name as a trademark as soon as possible. I've been wondering if I could then display the 'R' next to a logo with the stylised company name and design elements to it.

    Along with the whole word logo, I have a smaller logo with just the main design element and the first letter of the company name. I plan on getting this registered, as it is the official logo, and I know that wouldn't be covered by the company name registration. This won't be subject to changes, where as the name one may use different typefaces etc

    Until anything is registered I will use the TM symbol.

    I think your thoughts above have covered my queries, but if you've anything to add, I'd really appreciated it.

    Thanks,

    Emma
     
    Posted: Mar 15, 2016 By: dollfingers Member since: Mar 5, 2012
    #4
  5. SimplyMyLove

    SimplyMyLove UKBF Regular Full Member

    114 17
    Great post and it answered my question about our trademark. Is there any way to check whether a name has already been registered as trademark?
     
    Posted: Mar 16, 2016 By: SimplyMyLove Member since: Feb 8, 2016
    #5
  6. dollfingers

    dollfingers UKBF Newcomer Free Member

    11 0
    Yes, you can search for words/names through the Intellectual Property Office. If you do a google search it'll come up. Unfortunately I can't post a link for you.
     
    Posted: Mar 16, 2016 By: dollfingers Member since: Mar 5, 2012
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  7. SimplyMyLove

    SimplyMyLove UKBF Regular Full Member

    114 17
    Posted: Mar 16, 2016 By: SimplyMyLove Member since: Feb 8, 2016
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  8. dollfingers

    dollfingers UKBF Newcomer Free Member

    11 0
    No problem : ) Good idea to share the link.
     
    Posted: Mar 16, 2016 By: dollfingers Member since: Mar 5, 2012
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  9. F_B

    F_B Guest

    0 0
    I'd recommend doing a general internet search of your trademark too. Rights can be built up simply through the use of a mark without obtaining a registered trademark. If you then use a confusingly similar mark for similar goods/services you may commit passing off.

    This would mainly apply to the jurisdiction within which you intend to use the mark. A sole trader using the mark in the USA is unlikely to cause a problem for your use in the UK. However, use of a mark with significant reputation in the UK, even though goods/services are not sold under that mark can cause issues. This apply where, for example, a US tv show airs in the UK, becomes a cult hit. In the TV show there is a product with an iconic name which you then decide to use for the same goods in the UK.
     
    Posted: Mar 17, 2016 By: F_B Member since: Jan 1, 1970
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