Copyright and Trademark Symbols

©  TM  SM  ®

You've seen these symbols before, but how do you use them properly?

© - This is the symbol for a work protected by a copyright. Providing notice of copyright protection by using the © in connection with the author's name and the date is optional, as discussed here. However, copyright law has made it a crime to remove or alter a copyright notice, so whether your work is being copied lawfully or unlawfully, you have an extra incentive to use the © symbol on all original works of authorship.

TM & SM - These symbols indicate trademark use, but not trademark registration. Use these when you are using a word or a logo as a source-identifier, and you want to put others on notice that you are establishing common law trademark rights. The TM is appropriate where you are using your mark on goods, and the SM where you are using your mark in connection with services. Note that these symbols do not indicate that a federal trademark application has been filed.

® - Use the "circle R" with a trademark that has been granted a federal registration. A state trademark registration does not qualify. Be aware, though, that this symbol should only be used when you are using your mark in connection with the specific goods/services listed in your registration. So if you own a federal registration for the mark WIDGETS used in connection with steel bolts, using the ® symbol with your WIDGETS mark on ice cream would be inappropriate.

* This information is educational only; if you have questions about the use of these symbols with respect to your specific situation, please contact myself or another licensed attorney for assistance.

What is a Trademark?

Trademark law is a statutory construct that has its roots in the concept of unfair competition. Its goal is to protect consumers by limiting the use of similar trademarks by different sources. My die-hard Diet Coke fans would be confused and upset if they purchased a product called Diet Coke that tasted, instead, like Diet Pepsi. We want consumers to be able to identify the source of goods or services – so when they rely on the Diet Coke brand name when purchasing soda, they know they can expect the Diet Coke taste.

A trademark can be nearly anything that acts as a source-identifier: a word, logo, color, or even a sound. Consider a few of the more unexpected registered marks:

:: NBC chimes
:: The color orange, as used by The Home Depot
:: Intel’s chord sequence
:: The color pink used for insulation by Owens-Corning

When you see or hear those marks, chances are you can identify the source.

Securing Protection
Trademark protection is secured first through the use of the mark in commerce. Even without a registration, mere use can establish limited common law rights in the mark. We require this because if the mark isn’t being used, there won’t be a likelihood of consumer confusion.

Applying for a trademark registration is the best way to secure protection for your mark. An application may be submitted to the U.S. Patent & Trademark Office (USPTO) based either on current use in commerce, or on the applicant’s bona fide intent to use the mark in commerce (this type of intent to use application is an exception to the normal rule requiring current use).

So what does “in commerce” mean? The simplest definition is that the “in commerce” requirement refers to commerce that Congress may regulate. In other words, interstate commerce.

Unlike copyright or patent protection, trademark protection is perpetual, as long as you continue using the mark. Filings attesting to your continued use in commerce are also required on a regular basis to keep your registration active with the USPTO.

Benefits of a Federal Registration

Nationwide Priority
Common law gives you rights to your mark where you are using it geographically. However, if another user registers the same mark federally, they can keep you from expanding your use of the mark outside this limited area. Such a scenario could stunt the growth of a small or mid-sized business that is hoping to expand nationally or even regionally. This is why nationwide priority is often considered the most important benefit of a federal registration.

After a period of five years of continuous use, a trademark may qualify for incontestability status. Incontestability doesn’t mean your trademark rights will never be challenged, but it does serve to eliminate some of the most difficult threats, including allegations that your mark is confusingly similar to another registered mark, that it is merely descriptive, or that consumers don’t associate your mark with a particular product or service.

If your mark is granted incontestability status, it may only be challenged because of things like fraud, genericide, abandonment, or prior use.

Treble Damages
In cases of willful infringement, you may be able to recover three times your actual damages.

Use of the ® Symbol
The ® registration symbol serves to put others on notice of your trademark use and rights in the way that the © does for copyright owners. If you’re properly using the registration symbol, an infringer can’t avoid monetary damages by claiming innocent infringement.

Not only will a trademark registration deter others from using your mark, but the USPTO will help you prevent it by refusing to register confusingly similar marks. In addition, a federal registration will help ensure that your mark comes up in the preliminary trademark searches conducted by a potential user.

Domain Assistance
If you’re the owner of a federally registered trademark, you may be able to stop a cybersquatter who’s holding your domain name hostage for thousands of dollars.

* Please don’t misconstrue this as specific legal advice. If you need help with your own unique situation, you may contact myself or another licensed attorney.

What is a Copyright?

Copyright law has been around for a long time. It has its basis in our Constitution, which gives Congress the power “to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries . . . .” (Article 1, Section 8, Clause 8) It’s designed to encourage creativity by giving authors certain exclusive, time-limited rights.

Copyright law protects an original work of authorship fixed in a tangible medium of expression. What that means, in English, is that your work needs to demonstrate some minimum spark of creativity that originated with you (a pretty easy hurdle to overcome), and needs to be perceptible either directly or with the aid of a machine. It follows, then, that copyright law won’t protect works that are unoriginal or that aren’t fixed in some fashion. But it also doesn’t provide protection for the following:

:: Mere ideas
:: Titles, names, and slogans
:: Certain government works

Securing Protection
The good news for authors is that copyright protection attaches automatically upon creation of a work. There are no formalities required. For example, obtaining a copyright registration is not mandatory, and use of the copyright notice is no longer required. However, the formalities can yield significant benefits. More on that later.

Rights and Limits
So the moment you click the shutter and capture a photograph within the fixed medium of your digital camera, you are the proud owner of a copyright. Here’s what that gets you: exclusive rights. Now you’re able to control who may reproduce your photo, prepare derivatives of it, distribute copies, and display it publicly. Where your work is capable of being performed, you may also limit its public performance.

As with everything in the law, though, there are exceptions. Here we limit a copyright owner’s exclusive rights in certain situations, like where fair use may be implicated, for library copying, or to make a work accessible to those with disabilities.

Most works will be protected under copyright law for the life of the author plus 70 years. In the case of a Work Made for Hire - often where a work is created by an employee within the scope of his employment - protection lasts for 95 years from publication or 120 years from creation. Works created before 1978 will generally fall into the public domain after 95 years, but consult with a copyright attorney to be sure if you have a question about a specific work.

Benefits of Registration
An application for copyright registration costs only $35 (in early 2010) and can usually be filed online with the Copyright Office. Here’s how jumping through that small hoop can help:

Registration is necessary before an infringement suit may be filed
Although you can register a work after you learn of an infringement, the process is lengthy and the expedited fee is nearly $800.

It provides a public record of a copyright claim
Not only can this encourage a would-be infringer to “do the right thing” by providing ownership information for your work, but it can impact your recovery in a lawsuit. Willful infringements are subject to higher penalties.

If registered within 5 years of publication, it will establish prima facie evidence of the copyright’s validity
This doesn’t seem important now, but having a presumption of validity will be tremendously valuable if you ever need to immediately stop the distribution of an infringing work through a preliminary injunction.

If registered within 3 months of publication (or prior to an infringement), it will allow for recovery of statutory damages and attorney’s fees
In the absence of a timely registration, your recovery will be limited to your actual damages and the infringer’s profits. Not only can it sometimes be difficult to nail down, let alone prove actual damages, but also an infringer’s profits could be very small. If you’re successful in your lawsuit, having a timely registration allows you to choose the damages calculation most beneficial to you, as well as provide recovery for those pesky attorney’s fees.

* Please don’t misconstrue this as specific legal advice. If you need help with your own unique situation, you may contact myself or another licensed attorney.

Copyright vs. Trademark

What’s the difference between a copyright and a trademark? Although both protect intellectual property, the basis of each type of protection is different.

A copyright is designed to protect the author or creator of a work. A “work” could be a book, a painting, a sound recording, or a brochure – almost any original work of authorship that’s been fixed in a tangible medium of expression. If I’ve written a book called “The Lifecycle of a Grub,” for example, copyright laws grant me the exclusive right to reproduce my book, prepare derivatives, distribute copies, and to display or perform readings from my book publicly. I can choose to grant some or all of these rights to others via a license, or I can choose to deny them. We give authors these exclusive rights to encourage creativity and originality.

A trademark, on the other hand, is designed to protect consumers. At the root of nearly all trademark infringement cases lies an analysis of the likelihood of consumer confusion. A trademark – which could be a logo, brand name, or even a color – acts as a source-identifier, distinguishing Starbucks coffee from Caribou or Coca-Cola from Pepsi. If I paid $11 to buy a package branded just like my all-time favorite Charmin Ultra Soft toilet paper, and opened it to discover a product that feels like recycled sandpaper, I’d not only be confused, I’d be upset.

When you’re trying to decide what type of intellectual property protection you might need, ask whether you’re concerned about the author’s creative expression itself, or are you concerned about the public’s ability to identify you as the source of a product or service? It’s not foolproof, but it’s a helpful starting point.

* Please don’t misconstrue this as specific legal advice. If you need help with your own unique situation, you may contact myself or another licensed attorney.