Modern Hieroglyphs: Intellectual Property Signs of the Times
You see them every day; those funny-looking characters and symbols splashed all over goods and advertisements. Ⓡ. Ⓒ. Our friends “TM” and “SM” and even Ⓟ. Like modern hieroglyphs, we know that these symbols have some cryptic meaning or purpose, but what do they really mean and why use them?
The Ⓡ symbol tells the viewer that he or she is face to face with someone’s registered trademark under federal law. It puts that person on notice—take heed that someone has important and protectable rights in this particular name or mark. 15 U.S.C.A. § 1111 (a registrant of a trademark with the United States Patent and Trademark Office may give notice that a trademark is registered by displaying with the mark the words “Registered in U. S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the letter R enclosed within a circle, Ⓡ). Absent such notice, the owner’s ability to recover damages for infringement by others is limited under federal law unless the owner can show that the infringer had actual notice of the trademark registration. Never use the Ⓡ symbol for an unregistered trademark, however. Improper use of a registration notice with an unregistered trademark, if done with the intent to deceive, is a ground for denying the registration of an otherwise valid mark. Copelands’ Enterprises, Inc. v. CNV, Inc. (Fed. Cir. 1991) 945 F.2d 1563, 1566. It may also be found to be an affirmative misrepresentation raising the spectre of civil or criminal liability.
Where a trademark is not registered, those claiming a protectable trademark or servicemark can make use of the “TM” and “SM” symbols. The former signals a claimed trademark, while the latter is used with servicemarks (a servicemark is a trademark used to identify a service rather than a product). No specific federal statutes authorize the use of the “TM” symbol, limits its use, or states definitively what it does or does not convey to the public. Southern Snow Manufacturing Co. v. Snow Wizard Holdings, Inc. (E.D. La. 2011) 829 F.Supp.2d 437, 452 (“Southern Snow”). Historically, however, the designation has been used as a way of alerting the public to a claim of ownership of a trademark. Southern Snow, at p. 452. Such a claim does not necessarily equate with any actual, protectable rights. “…[T]he TM symbol does not mean that the party has trademark rights in the name or can ensure that the mark is capable of serving as a trademark…” Southern Snow, at p. 453-454.
However, using the “TM” and “SM” symbols can help establish a trademark. The courts may consider such use as evidence demonstrating that a name or mark is being used in the sense of a trademark or servicemark to reflect the origin of the goods or services, a factor in the overall determination of the existence of trademark protection. The fact that no symbol is used to designate an alleged trademark is evidence that the mark is not being used as a trademark. T.A.D. Avanti, Inc. v. Phone-Mate, Inc. (C.D. Cal. 1978) 1978 WL 21444, *6.
Use of the copyright related symbols Ⓒ and Ⓟ, can be a bit more complicated. For works first published after March 1, 1989, a formal copyright notice is optional. 17 U.S.C.A. § 401(a). There are several formats for this notice proscribed by federal statute. Federal law specifies that the notice may be in any one of the following forms: (1) the symbol Ⓒ (the letter C in a circle), (2) the word “Copyright” or (3) the abbreviation “Copr.” 17 U.S.C.A. § 401(b)(1). For sound recordings, a different form of notice is used—the symbol Ⓟ (the letter P in a circle) along with the year of first publication and the designation of the owner. 17 U.S.C.A. § 402(b). While not required, including a copyright notice on a published work can negate an infringer’s ability to rely on the “innocent infringement” defense to avoid the imposition of certain damages. 17 U.S.C.A. §§ 401(d) and 402(d).
A copyright notice was required for works published before March 1, 1989 (the effective date, as to the United States, of the international copyright treaty known as the Berne Convention). General publication before that date without a copyright notice could cause a work to enter the public domain if the copyright owner failed to cure the omission of the mandatory copyright notice. There are, however, some limited circumstances in which the omission of the copyright notice from authorized copies distributed by the copyright owner does not invalidate the copyright in a work. For example, a copyright is not lost if an otherwise required copyright notice was left off in violation of an express written requirement contained in the owner’s authorization of the public distribution of the work. 17 U.S.C.A. § 405(a)(3).
Unless you are adept at reading hieroglyphs, consulting with a trademark attorney before making use of any of these symbols in corporate logos, advertisements or other communications is a must.