Intellectual property represents a significant asset of many businesses, whether in the form of patents (for inventions), trademarks (for words, symbols or devices that identify the source of goods or services) or copyrights (for creative works, such as paintings, music and literature). For trademarks and works subject to copyright protection, proper usage of the appropriate notice, as well as understanding the consequences of not providing such notice, can be important considerations in preserving and maximizing the value of such assets.
The following presents a brief guide regarding the use of trademark and copyright notices under U.S. law.
The symbol “®” and “Reg. U.S. Pat. & Tm. Off.” are examples of proper notices provided by federal statute for use in connection with federally registered marks — i.e., marks for which the U.S. Patent & Trademark Office has issued a registration that remains in force. Such notices should not be used in connection with a mark of any pending registration application (even if allowed), an unregistered mark or a mark registered at the state level.
Use of the statutory trademark notice in connection with a registered mark is entirely optional. The consequence of non-use relates to damages: A failure to provide notice in connection with the use of a registered mark forecloses damages based on an infringer’s acts prior to actual notice of the claim. Thus, while use of the notice is highly recommended, non-use does not in any way jeopardize the validity or enforceability of the federal registration. Of course, improper use is not recommended, as such can lead to a claim of unclean hands or unfair competition.
The “TM” or “SM” symbols are commonly used to identify a claim of rights in unregistered trademarks (for goods) or service marks (for services), respectively. Use of these symbols is neither regulated nor required to claim rights in an otherwise protectable mark. Indeed, use of either symbol generally confers no legal rights, but again may help provide notice of a claim to others considering a potential infringement.
A common misconception is that registering a company name with the secretary of state confers rights in the name or the ability to use the statutory (“®”) notice. Indeed, the actual use of the company name as a trade name or trademark is what confers rights, and not the mere registration of the company name. In use, it also remains important to differentiate a trade mark from the trade name (e.g., there is a GOOGLE® search engine (the service for which the mark is registered), sponsored by Google Inc. (the company name, which is not registered as a mark). Registering a company name with the secretary of state also does not mean that the chosen name does not conflict with the rights of another, since the function of the secretary of state is simply to ensure that two entities do not have the same name.
To maintain strong, protectable rights, it is important to make proper use of a mark as an identifier of source. For example, marks should be used as adjectives, rather than nouns or verbs (”Use the GOOGLE® search,” not “I use Google” or “I Googled it”). Trademarks should not be pluralized (e.g., “I want two Cokes”), or otherwise “mutilated” through use other than in the registered form.
Failure to police the mark and halt improper uses may in extreme cases result in “genericide,” rendering the mark unprotectable against infringement. Terms like “aspirin,” “escalator,” and even “trampoline” once were valuable trademarks, but failed to maintain their source-identifying capability as a result of unfettered generic usage. Efforts can be made to foreclose this result: Years ago, the Xerox Corporation used a well-publicized advertising campaign to safeguard the XEROX brand and more recently, Google, Inc. issued formal guidance regarding the use of the GOOGLE brand.
Turning to copyrights, “©” is the statutory notice for use in connection with most copyrighted works. Unlike with trademarks, registration is not a prerequisite for using this symbol or to have a copyrightable work (which must simply be original, sufficiently creative and reduced to a tangible medium). However, registration with the U.S. Copyright Office is a relatively simple and inexpensive proposition in most cases, and may confer significant benefits (such as the potential ability to bring suit for infringement and obtain significant statutory damages and attorney’s fees).
The proper form of the copyright notice for a published work is “©,” followed by the year of first publication of the work and the name of the copyright owner (which is not necessarily the person who created the work, since the owner may have acquired the rights by way of an assignment or as a “work made for hire”). Frequently, the “All Rights Reserved” term- inology is used, which is no longer required but harmless.
Providing notice is an important consideration in any business strategy involving intellectual property. While the above guidance seeks to demystify the basic concepts, those interested in validating their practices in terms of trademark usage and providing notices of protected marks or works should consult an attorney specializing in intellectual property to prevent valuable rights from being lost.
Andrew D. Dorisio is a registered patent attorney in the Lexington firm of King & Schickli, PLLC.