I recently wrote a blog post about my high-efficiency grocery shopping habits. In it, I characterized a fellow shopper by the contents of her shopping cart including the ubiquitious Honey Nut Cheerios ®. Now, I did not include the ® symbol in my piece, even though I am a trade-mark lawyer and, technically speaking, I know better. I know that General Mills, Inc has trade-mark registrations for honey nut cheerios in Canada, the US and probably every other country in the free world. I know they take their branding seriously. Still, I did not use that ®.
Why? Well, first of all, from where I stand, here in the wilds of Canada, my use is not a trade-mark use. General Mill may disagree with me about that. They may feel they have to defend against their mark against any use by third parties, literary or otherwise, to avoid its becoming generic. And they would have a point. Still, I did not use that ®.
Nor did I identify the subject box as Honey-Nut O cereal which would be a fair generic description of the product. Why? Because that choice of words is not sufficiently precise. The character in question did not have the store-brand in her cart, she had the big name brand, and that is likely because the six year old in her home refuses to eat the store-brand, insisting instead that mom bring home big brown-and-yellow box with the gleeful little bee on the front. That is the only kind of cereal the child will eat and that detail matters.
But the more compelling reason for my not using that little ® is that I am a reader. And as a reader I find that little ® and its watered down cousin, ™, to be obnoxious. It is jarring, interrupting the flow of the piece, as though someone planted a little corporate flag ® in the middle of your morning reading material to cordon off their territory. Hey! This is General Mills talking. Watch your Step! I am sorry, but as a reader, there are some places where the corporate world does not belong.
The trade-mark lawyer in me is shaking her head, of course.
Is this how you would advise your clients?
Uh no. How I advise my clients depends entirely on their circumstances and the context.
Typical lawyer answer.
Well, you asked.
And so did one of my writing friends. She commented via email (because she is too chicken to post a comment on my blog site). “Um, “Don’t you think General Mills might not be happy about your using their product name. Isn’t that, like, infringement or something. “
“Well, I doubt they’ll notice and how I used it is not infringement, at least not in this country. (And I am not going to get into the potential cross-border issues here. It gives me a headache).
“You know down here they take that kind of thing pretty seriously.”
Now, by “down here”, she means the United States because, as you know moi, je suis Canadienne. And let me just remind you, dear reader: I am a Canadian lawyer (and reader). I am qualified to opine only about Canadian law. If you would like to know the US legal position on this issue, my talented friend Jan will be more than happy to help you.
To get back to my writing friend, I said:
“Yeah, well, maybe they will send me a big fat cheque for product placement.”
“Would they really do that?” I could see dollars signs in her eyes.
“Uh, no dear. I don’t think they would really do that.”
Tell me about it. The upshot of this? Registered trade-mark owners are wise to police the use of their trade-marks by third parties and to insist on the immediate cessation of any offending uses. Writers? Well, you have to do what your conscious dictates. And if you happen to get called on your literary use of a trade-mark? Then you are wise to call a lawyer who can provide you with advice.
I know, I know Typical lawyer answer.