Comments on: Referring to Trademarks

By: Ken Adams

Ken Adams — Fri, 01 May 2009 20:14:38 +0000

skevinp: The kind of contract you refer to would seem public, so I’d adjust my analysis accordingly. And I think the analysis is the same for the TM symbol, although I haven’t yet given the matter any real thought. Ken

By: skevinp

skevinp — Fri, 01 May 2009 19:51:41 +0000

Given that you place emphasis on the non-public nature of the contract, is the answer any different for a clip-wrap type agreement that accompanies a “buy now” type scenario for the trademarked product or service?

Also, is the answer for the registration symbol any different for a common law “TM” symbol?

By: Ken Adams

Ken Adams — Fri, 27 Oct 2006 15:30:10 +0000

Mike: No argument: as I say in my post, “judicious use of defined terms can allow you to minimize the effect on readability.” But note that whereas using the defined term “Mark” would work for a trademark license agreement, it wouldn’t work for a commercial agreement, where the mark is used to designate a product rather than used purely as a trademark. Ken

By: mike

mike — Thu, 26 Oct 2006 20:17:21 +0000

Can I ask, what’s the point of referring to the mark more than once in any particular agreement? Wouldn’t it be considerably more efficient to have something more like this:

“Mark” means Licensor’s United States registered trademark Flexorbalin for [insert the non-trademark generic term].

By: Ken Adams

Ken Adams — Thu, 15 Jun 2006 21:32:19 +0000

Point taken, Mike. It so happens that the pharmaceuticals contracts I’ve been reviewing do refer, at least once in the contract, to the compound name of the drug in question. But for the same reason that you don’t need to worry about all capitals and the registration symbol in contracts–they’re not public documents–I’m wondering whether you need to worry unduly about stating in a contract the associated generic term. But I think it’s informative to state it, and furthermore it doesn’t render the contract any less readable. But this is my off-the-top-of-my-head take on this issue; I’ll look more closely at it down the road.

By: Mike Brown

Mike Brown — Thu, 15 Jun 2006 21:14:51 +0000

There’s a more important consideration in my mind than whether you say FLEXORBALIN or Flexorbalin, or include the r-in-a-circle or not: it’s important not to use a trademark without the associated generic term. At the least, the contract should include some wording like, “as used herein, the term FLEXORBALIN is understood to be Drugco’s trademark for flexocarbomethyltrexate HCl in tablet form”.

If your client consistently talks about selling FLEXORBALIN, and in their contracts for sale of FLEXORBALIN they never, ever, call it FLEXORBALIN brand flexocarbomethyltrexate antihistamine, then they will be well on the road to genericide. At some point, somebody will begin to sell “Generidrug brand flexorbalin tablets”, and in the resulting litigation they’ll be able to point at every case where the trademark owner used the mark in a generic sense – and Bob’s your uncle. Just look at aspirin (formerly a brand of acetosalicylic acid), or thermos (formerly a trademark for vacuum flasks), etc.