Trade Mark Issues

Print vs Web

[willybfriendly]

I am currently in dialogue with an atty client regarding a site design and we are bogged down on some issues of Trade Mark design.

He writes, in part, "The other important rule of thumb for trademark protection is that whenever the mark is used, it should always be in the same form. That is to say that it should always have the same style and content and the same relative proportions regardless of size," and goes on to request that a logo and wording (some 650 px wide) be rendered on the page so that it always has the same "relative proportions".

Of course, this raises usability issues. I mean, how will that graphic scale to someone's PDA while they are sipping a latte in Starbucks?

And, it dilutes efforts at SEO since the company name, which is included in the trade mark, is a perfect page heading (which I would like to proclaim in a nice <h1>).

He also wants a TM next to all marks, writing:

"A dissertation in my 'Trademark' precedent files states: 'It has become quite common to use the letters TM in small caps as a notice for unregistered trademarks. This TM notice conventionally runs in the same relative position as the circle-R notice, that is, generally on the shoulder of the trademark'.

"It is also seen as acceptable by lawyers that a declaratory statement can be put at the bottom of the page with an advertisement to the effect 'Gremlin, Widget and Whatsis are trademarks of Empire Manufacturing, Inc.' When it comes to a website, I am not sure how to apply 'at the bottom of the page'. My gut tells me that whatever one customarily sees on his monitor while scrolling up and down the view that contains the trademark is an acceptable page for the declaration to be noticed in."

You may be able to imagine the difficulty of talking web realities with such an articulate and educated person as this.

We have language under the Terms of Use that all parties agree adequately addresses the interests of the site owners except for the above - "<the trademarked phrase>, and other marks displayed on our site are trademarks or trade dress of <the company>. <the company> trademarks and trade dress may not be used in connection with any product or service that is not <the company>'s, in any manner that is likely to cause confusion among customers, or in any manner that disparages or discredits <the company>"

So, after that rather wordy explanation of the background, we get to my question.

Does anyone know of any Internet case law that addresses his concerns about:

1. The placement of TM next to marks
2. The need that, "it should always have the same style and content and the same relative proportions regardless of size"
3. The need for a declatory statement at the bottom of each page

I understand that I will not get valid legal advice on these boards, but any input would be greatly appreciated.

WBF

[graeme_p]

Firstly, there is some significant variation between countries: if your client needs to ensure his trademarks are protected in more than one country, you have to check all of them - although I think EU law is harmonised now.

Secondly, going on my rather out for date knowledge of UK law, I doubt that changing just the text size, if the logo remains the same is going to cause a problem. Id the logo is distinctive by itself?

I doubt you will get a clear answer on how the notice needs to be shown. I visit sites that show the same legal notice in ways that range from a page of its own you have to click on before seeing any other pages on the site to a page that is simply linked to from key pages on the site.