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.

Eligibility

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.

Duration

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.

Incontestability

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.

Deterrence

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.

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.