Use of Registered trademark

Question

I'm writing a book on Windows and I need some guidelines.

1. On the cover of the book, as part of the subtitle, may I include Windows® in it?
2. Inside the book, do I have to use the ® every single little time I mention it, or will it be (legally speaking) implied by that point?
3. I'm not necessarily talking bad about Windows, but I am showing how to do things on Windows that the owners of the trademark probably wouldn't like. Books like The Shellcoder's Handbook show you how to write exploits, and include chapters dedicated to this operating system. Is this a legal grey area or am I free to use it as I please?

Here's a reference I saw that didn't answer all of my questions:

http://www.microsoft.com/en-us/legal/IntellectualProperty/Trademarks/Usage/General.aspx

Answer 1

I'll answer this question from an uncommon perspective. The Publication Manual of the American Psychological Association (APA) recommends that you do not use the ™ or ® symbols but requires that you capitalize trade and brand names (2009, p. 102-103).

If a whole science can do without these symbols, so can you.

If you are unsure, look how respectable publishers like Addison Wesley or O'Reilly handle the case.

O'Reilly mostly does not use the trademark symbols on the covers of their books on Windows:

but sometimes they do:

Yet in the interior text of the Windows® 8.1 Bible O'Reilly does not use the trademark symbol that they printed on the cover. You can see a large part of the book online in Google Books (direct link):

What they do is print a trademark attribution on the copyright page:

Only if you sell or advertise trademarked products do you need to follow the trademark owner's guidelines. What you must make sure, though, is that it is clear that your publication is not official or endorsed by Microsoft in any way, and that you do not use their trademarks to market your publication (so, for example, do not make "Windows" bigger than other text on the cover).

If you are the trademark owner, you don't have to use trademark symbols. For example, Apple does not use trademark symbols with their hardware, software or brand name. They have no legal implications. Their only purpose is to quickly identify trademarked words and phrases, but their absence does not mean that a word or phrase is not trademarked.

---

I think that you should be safe if you do what other publishers do, but personally, I would consult a lawyer, especially if your publication is critical of Microsoft or its products. Paying for legal advice is cheaper than having Microsoft's lawyers destroying your life.

Answer 2

It is never required for anyone to use the ™ or ® symbols, unless one has an agreement with the trademark owner specifically requiring it. The owner often chooses to use these symbols so as to notify others that the mark is protected. Then others cannot claim not to know that a mark was protected or registered. Another person may choose to use one of these symbols as an indicator that they know the mark is protected, often together with a disclaimer acknowledging the actual owner of a mark. This is not required, but can help avoid consumer confusion.

One can use a mark to refer to a product or service provided by another, so long as it is not used in such a way as to confuse others into incorrectly believing that a product is affiliated with, endorsed, approved, or sponsored by the owner of the mark, when it is not.

Only uses identifying a product or service, or the source of a product or service, or used in advertising a product or service are potential infringement. Uses comparing a product or service with the thing properly identified by the mark are proper "comparable use", and are not infringement. Uses indicating that a product is compatible with a different product are also acceptable, and not infringement. And finally, uses discussing, commenting on, reviewing, or criticizing a product or service are acceptable. All of these are forms of nominative use, and are acceptable, even if negative views are expressed, so long as a product is not falsely represented to be affiliated or approved when it is not, and no one trades on the good will of the mark or the product or service that the mark represents.