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Going Nuts Over the Proper Use of Trademark & Copyright Notice Symbols?

Posted in Advertising, Branding, Copyrights, Marketing, Mixed Bag of Nuts, Trademarks

It was too hard for me to avoid snapping this quick photo while grabbing a tasty bag of cheese corn from the “Nuts on Clark” vendor (to better enjoy waiting for a flight out of Chicago’s O’Hare airport recently), and I trust you see what caught my eye (in the lower right corner of their signage).

It seems to me, there continues to be much confusion over when to use what intellectual property notice symbols, and most questions seem to surround the TM, SM, and Circle “R” designations, and the Circle “C” copyright notice, so maybe this provides a good opportunity for a refresher course:

  • TM means the owner claims proprietary rights in the designation serving as a trademark, so goods or products are being sold under the designated trademark; there is no requirement to use it, and there is no requirement to take any affirmative steps (such as seeking registration) before using it, but putting others on notice of your claimed trademark rights is a good idea, if for no other reason, it has some immeasurable deterrent value; having said that, most will use TM until federal registration has issued, then switch over to use of the Circle “R” symbol.
  • The only meaningful downside I can think of — at the moment — to using the TM symbol, would be if you were sued for trademark infringement by another who had prior rights in a confusingly similar designation, and you wanted to assert a “fair use” defense; using the TM notice likely would be an admission that the designation is being “used as a mark” — taking it outside the bounds of a classic and descriptive trademark fair use defense: “Section 33(b)(4) of the Lanham Act, a/k/a the statutory classic or descriptive fair use trademark defense, does not apply unless the use is “otherwise than as a mark,” and the term used is “descriptive of” the accused’s goods or services, and it is “used fairly and in good faith only to describe the goods or services” (emphasis added) of the one making the unauthorized use.”
  • SM means the owner claims proprietary rights in the designation serving as a service mark, so services are being sold under the designation, as opposed to goods (although sometimes there is a reasonable basis for using either TM or SM or both, when both goods and services are being offered for sale under the same proprietary designation); otherwise, the details, and the pros and cons stated above for TM apply with equal weight to use of the SM symbol.
  • ® means the owner actually has federally-registered the designation as a trademark or a service mark (I suppose it also could mean the designation is registered as a certification mark or collective mark, but those are few and far between) for the goods or services covered by the symbol’s use — for more details on the proper use of the ® notice symbol, check my post from a few years back: Registration Symbol Misuse As Trademark Fraud?
  • © means the owner claims copyright, not trademark or service mark rights; but, technically using © by itself does not even provide proper notice under the Copyright Act, since the date of publication and owner’s name are also required to satisfy formal notice; for more details check out Karen Brennan’s post from a couple of years ago: Copyright – Common Misconceptions.

So, after that refresher, how did “Nuts on Clark” do?

Putting aside the opinions our loyal marketing types might offer on the cluttered appearance of TM and © symbols (we’d love to have you share your opinions by the way), the use of TM makes a lot of sense to me, since food items are being sold and delivered in bags – this is classic trademark use. Having said that, there would be nothing technically wrong in using SM either in this context, since retail store services also are simultaneously being offered under the “Nuts on Clark” designation.

Use of ® would be improper since there appears to be no federal registration for the “Nuts on Clark” designation, the only application I found was abandoned back in 1984, see USPTO file here.

What I’m having a hard time understanding is the © notice symbol since copyright is not eligible to protect names, titles, or short phrases.

Do you suppose the owner of “Nuts on Clark” is simply confused about which intellectual property notice to apply or do you suppose they believe the signage is sufficiently artistic to warrant copyright protection in it as an original work of authorship fixed in a tangible medium of expression?

If the latter, do you agree that the “Nuts on Clark” signage actually is protected by copyright?