The following is a trademark disclaimer that I found in a textbook recently, although I’m not sure that ‘disclaimer’ is the correct term. I haven’t noticed provisions drafted like this before and I’m really not sure what it’s getting at. I’d be interested in others’ thoughts…
“All terms mentioned in this book that are known to be or are suspected of being trademarks or service marks have been appropriately capitalized. [Book publisher] cannot attest to the accuracy of this information. Use of a term in this book should not be regarded as affecting the validity of any trademark of service mark.”
My initial questions are:
1/ What is this clause trying to achieve?
2/ Is it an attempt to avoid liability for TM infringement or dilution? If so, I’m not sure how it would achieve that, particularly as it’s framed in terms of the validity of the mark in the markholder’s hands.
3/ How does the reference to ‘appropriately capitalized’ terms have any bearing on the question as to the potential liability of the publisher for TM infringement or dilution, if indeed that’s what the reference is for?
4/ How does it make sense to frame the clause in terms of ‘not affecting the validity of the TMs’? Wouldn’t the potential problem for the publisher be a concern by a TM holder that its marks had been infringed or diluted in some way, not that they may be invalid?
Has anyone else come across these types of clauses in print or online publications?
Jacqui —
Just a guess, but perhaps it’s an anti-genericide provision? E.g. A hyper-cautious publisher asks Kimberly-Clarke if they can make reference to Kleenex(r) in the textbook, worried that K-C has exclusive rights to the word. (Which they don’t, of course.) Kimberly-Clarke (hypothetically!) goes along with this fear and asserts a right to prohibit publisher from using the mark, claiming that the use in the textbook would be dilutive potentially (who knows what dilution means, after all) and states that the textbook can only reference their brand if it is capitalized (“Kleenex”) and therefore is clearly not a generic term. (I could see why a brand owner might prefer this.) Publisher says “okay” and further takes this warning to heart, worries that other TM owners might sue for references to TMs, puts this “disclaimer” in to pre-empt those claims — i.e. “We’re capitalizing all our brand names, so have no fear of genericide!”
Again, that’s all just complete guesswork, but I think it’s a plausible story.
I assume whenever I see a mark in a textbook that the textbook publisher googled the mark on, like, the PTO database or something and concluded it was OK to xerox it. I wouldn’t think any mark owner would need a kleenex over that, for example one made by Puffs.
I hadn’t thought about genericide as the possible motivation for this. Good point. (And – ha ha, Bruce! I might need a puffs to wipe the tears of mirth from my eyes…)
If we had a “like” button in these comments, Bruce, I would “like” on your comment — but because we don’t, I just like it.
Isn’t there a cause of action in the EU against publishers who improperly use TM’s in the text. I vaguely recollect McD going after an UK company about that.
I don’t know, Llew, but that certainly sounds as plausible an explanation as any.
Part of the problem with the encouragement that courts give to trademark owners to “police” their trademarks is that they try to persuade even noncompetitors to treat their marks in particular ways. Sometimes courts encourage this behavior directly. See, e.g., Ill. High Sch. Ass’n v. GTE Vantage Inc., 99 F.3d 244, 246 (7th Cir. 1996) (Posner, J.) (“A serious trademark holder is assiduous in endeavoring to convince dictionary editors, magazine and newspaper editors, journalists and columnists, judges, and other lexicographically influential persons to avoid using his trademark to denote anything other than the trademarked good or service.”).
Self-promotion alert! I talk about this a bit in The Grammar of Trademarks, 14 Lewis & Clark L. Rev. 1313 (2010).
Hmm, interesting Laura. So I guess the book publishers are just trying to keep their noses clean even if they’re not sure of what they might be sued for. (And note that I managed to imply another Kleenex/Puffs reference for those who need to clean their noses!)
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