[This post is part 3 of a 3 part IP Basics Series]
In a recent series of IP Basics: Copyrights, Trademarks and Trade Secrets, Oh My! and What are “Trade Dress” and “Trade Secrets?”, we considered a number of different types of intellectual property (IP). In this post, we will discuss those ubiquitous IP related symbols we see on products (and other works) and what they really mean.
The Copyright Symbol. Use of the copyright symbol Ⓒ is regulated by federal copyright law. 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).
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).
The Trademark Symbol. 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.