Trademark Notice Symbol

It is frequently becoming more and more difficult to remember all the topics we’ve covered here over the last — almost — nine years. A recent Snickers end cap display jogged my memory:

Turns out, eight months into this little adventure we call DuetsBlog, I wrote a blog post called Delicious Trademarks: Candy Bar Cross-Section Trademarks? Then, a year later I wrote this one.

My only friendly amendment to the above point of sale end cap convenience store display is to swap the ™ notice for the coveted (or not so, under certain circumstances) ® registration symbol.

Wow, I have been asleep at the switch on this topic, my sincere apologies dear readers. Nearly a year after my second post on this topic, Mars filed an application to register this trademark:

After a couple rounds of descriptiveness office actions, Mars was able to persuade the Trademark Office that the claimed non-verbal candy bar depiction had acquired distinctiveness.

But, that wasn’t the end of the story, because as is often the case when unusual trademark protection is sought, a direct competitor came knocking, in this case, Hershey Chocolate opposed.

Our friend Marty Schwimmer over at the Trademark Blog was johnny-on-the-spot back in 2013 as Hershey opposed the day before Halloween, while I was distracted with this cheesy topic.

The functionality opposition continued for roughly three years until Hershey was able to extract some pretty sweet concessions from Mars, as revealed in this Consented Withdrawal of Opposition Without Prejudice Contingent Upon Amendment of Application.

So, after a little interpretation and modification by the Board, the registration issued with these express limitations:

“The mark consists of a cross-section of a candy bar showing layers within the candy, namely, a middle light brown layer containing several tan-colored peanut shapes and a bottom tan layer, all surrounded by a brown layer. The mark depicts a distinctive two-dimensional cross-sectional view of a candy bar.”

“No claim is made to the exclusive right to use the following apart from the mark as shown: THE SELECTION OF CANDY BAR INGREDIENTS DEPICTED IN THE MARK OR TO THE CONFIGURATION OF A CANDY BAR CONTAINING THOSE INGREDIENTS, EXCEPT AS DEPICTED IN THE APPLIED-FOR MARK.”

Now, there’s a mouthful. Suddenly, the actual issued trademark registration, doesn’t seem all that non-traditional, non-verbal yes, but clearly a two dimensional slice of, let’s say, non-configuration.

Given that, would you be speechless explaining to a client (anyone other than Hershey) what it can and can’t do in advertising food looking something like that when broken in half?

Another question, why doesn’t the end cap display of the cross-section match the drawing of the registered mark? For what it’s worth, I’m more tempted by the end cap than the registration.

Last question, what about Mars’ representation that the claimed mark “always appears in exactly the same manner when used by Applicant.” Maybe it was true when made, don’t know for sure.

Looking forward to sharing the podium with Joel MacMull of the Archer firm (counsel for Simon Tam, where our friend Ron Coleman is a partner) to discuss “Trademark Registration and the First Amendment,” on September 28th at the Midwest IP Institute in Minneapolis.

As a drum roll leading up to that discussion, and since there is so much to digest in the recent Supreme Court decision in Tam, I thought I’d do a series of posts on the decision and its implications, beyond what I’ve already written.

In this first installment, my focus will be on critiquing (as a trademark type) the opinion of the Court, that is, the portion of the decision written by Justice Alito, to which all seven of the other Justices agreed (the ninth, Justice Gorsuch, did not participate in the decision).

In a nutshell, my principal problem with the Court’s opinion is that all eight Justices have conflated the federal government’s issuance of a Certificate of Registration with the underlying applied-for trademark. The Court ignored that the meaning of each is distinct.

The meaning of the underlying trademark is one thing, determined by how the relevant public perceives and understands the applied-for mark. As an aside, the Court seemed more interested in Mr. Tam’s intentions in using an admitted racial slur as a trademark.

Yet, the meaning of the Certificate of Registration is quite different. It signifies that the federal government has approved the applied-for trademark for registration and issued a federal registration “in the name of the United States of America.

It would be easier to accept and respect the decision of the Court had it acknowledged and attempted to explain why Congress is powerless under the Commerce Clause to regulate what the USPTO may issue “in the name of the United States of America.”

Perhaps the Court’s conflation in Tam should be no surprise, as a few years ago, the unanimous Supreme Court in B&B Hardware, essentially conflated the right to register a trademark with the right to use the trademark.

Another concerning aspect of the Court’s opinion is how it seriously overstated what was at issue in Tam. It held that in denying federal registration to a mark consisting of a racial slur, the disparagement clause of Section 2(a) of the Lanham Act “violates the Free Speech Clause of the First Amendment” because it “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

To be clear, the only speech even potentially banned under Section 2(a) of the Lanham Act relates to forbidding the use of the federal registration symbol — ® — next to the racial slur, because that symbol may not be used, unless a Certificate of Registration has been issued for the mark in question.

To the extent the ® symbol constitutes speech at all, the symbol ought to be considered government speech (which is outside First Amendment scrutiny), since federal governmental approval is required in order to use it in commerce.

The Court missed the point when it stated the obvious: “Trademarks are private, not government speech.” The better and more relevant question would have asked whether the ® symbol is purely private speech. Seems obvious to me it’s not.

While the underlying trademark has a certain meaning and constitutes private speech, the federal government’s issuance of a Certificate of Registration and allowing the use of the ® symbol to signify this fact, cannot fairly be considered private speech. Instead, by definition, it connotes governmental approval.

On this point, the Court was unconvincing when it cited a 55-year old concurring opinion from the late Federal Circuit Judge Giles Rich for the proposition “it is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means.”

In that case, Judge Rich claimed, at least in 1962: “The purchasing public knows no more about trademark registration than a man walking down the street in a strange city knows about legal title to the land and buildings he passes.”

In my experience, all sorts of folks know that the ® symbol cannot be used without first obtaining approval from the federal government. Goodness, Forbes writes about it, National Law Journal, admitted non-lawyers, and a multitude of others do too, including us.

Friends, what do you think, do the folks understand and appreciate that the ® symbol is special and cannot be used without first obtaining approval from the federal government?

Seeing these on the store shelf this weekend reminded me that we are still anxiously awaiting the USPTO’s decision from the Trademark Trial and Appeal Board (TTAB) as to whether the words “pretzel crisps” will be found generic for “pretzel crackers” –basically, a public domain category or class of goods term, in the same way that “footlong” was found generic for sandwiches.

It took the TTAB just under one year from oral argument to render the “footlong” genericness decision in Sheetz of Delaware, Inc. v. Doctor’s Associates, Inc.

By the way, did anyone notice that Subway did not appeal the genericness ruling, making the decision final? So, I’ll ask again, what about those Millions of False TM Notices to Remove?

If the TTAB takes the same amount of time in deciding where “pretzel crisps” falls on the Spectrum of Distinctiveness, it will be July before we know the answer, but something tells me the TTAB’s decision in Frito-Lay North America, Inc. v. Princeton Vanguard, LLC won’t be the final answer, it is hard to imagine either party letting this one go without an appeal.

The USPTO’s Trademark Acceptable Identification of Goods & Services Manual has listed “potato crisps” as a generic product designation since 1991 and “potato crisps and chips” since 2007, so can “pretzel crisps” expect a different result?

Dear readers, any predictions on how this one will be decided, and when?

My daughter’s strong interest in fashion, arts, crafts, and sewing has me wandering the aisles of places like Joann Fabrics and Michaels with increasing frequency.

Since my primary contribution to these adventures is in the to-and-from, and, I suppose, at the check-out counter, I find myself with eyes wide open, being exposed to a variety of brands very new to me. Learning about new brands, new markets, and observing how the brand owners in these markets communicate with their customers is fascinating to me. And, this is learning I have come to expect. The learning I haven’t expected, however, relates to the discovery of a new intellectual property notice symbol, or, at least one that I just encountered for the first time.

This past weekend on one of these retail adventures, I noticed packaging and point of sale displays using what appeared to be an intellectual property notice I hadn’t seen before: TM/MC.

To be sure, and as you know, I’m all too familiar with the TM notice symbol, and, in fact, I wrote about it not too long ago: Going Nuts Over the Proper Use of Trademark & Copyright Notice Symbols? It was the MC portion of the notice symbol that had me scratching my head. McDonalds? Or, perhaps an oddly truncated acronym for Martha (Stewart) Crafts?

Here are a couple of the examples showing the TM/MC notices that I recently encountered (okay, I’d heard of Martha Stewart before this visit):

So, what I’ve been able to discern is that the TM/MC notice symbol appears designed to communicate claimed common law unregistered trademark rights to both English and French speaking consumers in a single treatment.

According to the Canadian Intellectual Property Office:

“You might notice that some trade-marks are followed by the symbols ® or ™. Canada’s Trade-marks Act dœs not contain any  marking requirements. However, you may have come across the following symbols  used by trade-mark owners, namely, ® (registered), TM (trade-mark), MD (marque  déposée) or MC (marque de commerce). The ® or MD are generally used to identify  a registered mark. The symbols TM or MC  are generally used to identify an unregistered mark.”

And, there you have it, mystery solved.

Have you encountered the TM/MC notice symbol before? If so, where, and in what context?

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?

As promised, some time ago, here is an enormous wall sign from one of the many hallways connected to one of the many shopping areas at The Shoppes at the Palazzo in Las Vegas, showing all these retail brands in simple lower case style.

No trademark notice or registration symbols either. . . .

Do you suppose the entity responsible for promoting the various retailers obtained clearance from the brand owners to use the brand names this way?

Marketing types, would you have encouraged this kind of use as a manager for one of the brands?

Trademark types, would you have ok’d this kind of use if you represented one of the brands?

So, what do you see, wall of fame, wall of shame, or something else?

Last, seeing christian louboutin on the sign reminds me, we’re still waiting for the Second Circuit Court of Appeals to rule on the red color case.

I’ll have to say, I really enjoyed Aaron Keller’s guest post from yesterday. In addition to the valuable insights he provided, it got me thinking about some perhaps unrelated, but parallel topics of likely interest to legal and marketing types.

Aaron wrote about the importance of a brand being honest with itself and others. He expressed the need for truth in brand messaging. Puffery leads to less trust in a brand. Less trust leads to less loyalty. His call to action was for more people to demand the truth for the brands in our lives. He concluded by asking whether your brand might be stretching the truth and whether it is living up to the brand’s implied and explicit promises.

Similarly, as Anthony Shore of Operative Words wrote before here on DuetsBlog, "truth is stronger than fiction" in brands.

Now, without putting words in Aaron’s or Anthony’s mouth, I’d sum it up by using a word they didn’t and saying: credibility is the key.

I can think of a few other examples where the absence of credibility leads to other kinds of negative consequences and, in some cases, bad behavior.

On the subject of bad behavior, Alec Baldwin recently received a lot of media attention over being kicked off an American Airlines flight for apparently not turning off an electronic device when told to do so by a flight attendant. Although I’ve never been close to being kicked off a flight, I’ll have to admit I harbor a healthy dose of skepticism in the repetitive, but unsupported claim that electronic devices risk flight safety by interfering with flight navigation and aircraft instruments. Apparently, I’m not alone.

Most recently, the Christian Science Monitor had this to say on the subject:

"Although many passengers are skeptical that using electronic devices can threaten air safety, some travel experts say the industry has good reason for its protocols on the use of cellphones and similar devices.

Geoff Thomas, editor of Air Transport World magazine, tells an Australian arm of ABC News that glitches appear to be ‘exceedingly random,’ but that there’s ‘enough evidence to suggest that it is a problem’ that can interfere with aircraft instruments."

That’s it, this was the end of the article that began this way: "Others say there is a reason for the protocol on ‘shutting off’ electronic devices." So, I was anxiously reading, hoping for more enlightenment in this article than a flight attendant on duty probably has time to provide, instead just more platitudes.

To quote Aaron in another context, really? Yeah, I’d like to see the evidence or at least something other than conclusory statements on the subject of signal interference. Without more substance or explanation, passenger skepticism is fueled, and credibility is out the window without a parachute.

In fact, I’d welcome an airline brand’s honesty on the subject. I’d certainly feel more trust and engender more loyalty toward an airline brand that just admits there is no conclusive evidence of a safety problem, but expresses that "we’re all about safety, and we simply won’t take that risk, no matter how remote, for fifteen minutes of convenience at the beginning and end of a flight."

There, I’d believe it, I’d trust it, and I’d stop questioning and being annoyed by the rote words surrounding purported signal interference.

And being worthy of trust is a wonderful thing for a brand, especially an airline brand, because I might even start believing some of the answers given to other common passenger questions like why I can’t place my room-temperature laptop in the seat pocket in front of me, or why a flight is late, delayed, sitting on the runway, or eventually canceled.

Last but not least, it’s time for trademark types to examine their personal brands and look in the mirror on the issue of credibility in assessing risk. As I have written before, there is a new breed of marketer — the type that expects much more from their trademark counsel than reciting all the trademark do’s and don’ts without being cross-examined on how realistic the risks might be of disregarding or not following some or all of the advice.

My growing sense is that in these increasingly competitive times, marketers want to probe previously unquestioned trademark use guidelines that forever have forbidden any brand or trademark use beyond that of an adjective. They are especially interested in knowing how realistic the risk of genericide is if they were to "verb" their particular brand. Moreover, they aren’t interested in following black and white rules that unnecessarily straight-jacket their creativity. Ever wonder why Google uses no trademark registration notice on their homepage?

Trademark types, are we ready to address the true risk of genericide and other so-called risks on a case by case basis and then work feverishly to help mitigate whatever that risk might be?

There are many things that serious trademark owners do throughout the lifecycle of a trademark to mitigate risk, protect the valuable goodwill in their underlying brand, and preserve their valuable investment in this important intellectual property asset. Here is a fairly extensive, but certainly not exhaustive, and often forgotten, list of those things:

  1. Clear new marks before using them even if “only” for brand extensions;
  2. Understand the pros and cons of different name styles;
  3. Adopt suggestive marks over merely descriptive ones;
  4. Self-police marketing materials to keep marks suggestive and non-functional;
  5. Steer clear from the D-word;
  6. Appreciate the pros and cons of non-verbal wordless logos;
  7. Strive to own logos that can truly stand alone without words;
  8. Spend time developing an acceptable generic name too when launching new brand;
  9. Develop non-traditional trademarks;
  10. Recognize the power of federal trademark registration;
  11. Know when concurrent trademark registration makes sense;
  12. Appreciate the paradox of brand protection;
  13. Attend to brand strength and understand the importance of trademark enforcement;
  14. Educate themselves about trademark likelihood of confusion issues;
  15. Prefer their own creativity over borrowing the creativity of others;
  16. Question how realistic the risk of trademark genericide is for them;
  17. When realistic, they take concrete steps to avoid the perils of trademark genericide;
  18. Develop plans to avoid trademark abandonment;
  19. Avoid bona fide allegations and findings of trademark fraud, trademark bullying and reverse domain name hijacking;
  20. Know what a touchmark is;
  21. When appropriate, they pick up the phone before writing a demand letter;
  22. Follow Seth Godin’s marketing advice, but avoid his trademark advice;
  23. Manage the legal risks of verbing trademarks and brands;
  24. Appreciate the limits of the nominative trademark fair use defense;
  25. Steer clear of Dr. No on the Parade of Horribles;
  26. Hire trademark counsel prepared and expected to take a position; and
  27. Of course, read DuetsBlog every day and note the milestones along the way.

Now, this is not to say that trademark owners who don’t do each of these things is comedic or not to be taken seriously, but many at least consider or should consider doing these things.

You may recall about a year ago I did a post entitled "Delicious Trademarks: Candy Bar Cross-Section Trademarks?" I was reminded of this a couple of weeks ago when I snapped this photo, capturing what I believe to be the same point of sale display that inspired my original post:

A couple of months ago I saw in a convenience store a large Snickers point-of-sale floor-display depicting a prominent and attention-getting cross-section of a Snickers candy bar. Given Mars’ apparent interest in owning and creating non-traditional trademark rights surrounding the Snickers brand (revisit Dan’s post from earlier this year), it made me wonder whether Mars might view (and want consumers to view) the cross-section of the famous Snickers candy bar as a trademark too. After all, trademarks are one form of intellectual property that can last forever, so long as they continue to be used in commerce. In case you’re wondering, I couldn’t find any indication that Mars has sought to register any candy bar cross-sections as trademarks.

Now, keeping in mind, to be a non-traditional trademark, the symbol or device must (a) identify the goods, (b) distinguish the goods from those of others, and (c) indicate the source of the goods, there appears to be (at least) some potential for treating candy bar cross-sections as trademarks, provided the cross-sections actually are used as trademarks in commerce. In other words, it’s not enough that the bars could be sliced to view their otherwise purely internal cross-sections; depictions of the cross-sections would have to appear on packaging or at least point-of-sale materials (advertising alone won’t cut it).

So, to satisfy a court’s hunger for the "use in commerce" requirement, and if depicting the candy bar cross-section on packaging leads to a creative buzz-kill, then a prominent cross-section on point-of-sale displays should suffice. Having said that, given the non-traditional nature of a cross-sectional trademark, perhaps some "look-for" advertising might be just what the candy man ordered to help create the cross-section as a delicious new non-traditional trademark. The Candyblog certainly enjoys showing cross-sections of candy bars in discussing the pros and cons of the various goodies they review. 

In case you’re wondering, I still see no sign that Mars is seeking federal trademark registration of any candy bar cross-section, but just days ago, in a different convenience store, I snapped yet another image of a more recent Snickers point of sale display, this one co-branding with the NFL’s Super Bowl XLV, to be played February 6, 2011, in Cowboys Stadium, located in Arlington, Texas.

Still no trademark application (at least, yet), but this more recent point of sale display actually shows a TM notice positioned next to the cross-section image, indicating Mars does, in fact, view the cross-section as a trademark, see the image below the jump, if you don’t believe me.

Continue Reading Snickers Cross-Section Trademark Notice

Thumbnail for version as of 15:21, 6 September 2009           Thumbnail for version as of 14:28, 28 October 2007  Thumbnail for version as of 05:55, 3 December 2007

Last September, in my blog post entitled "What Does Trademarked Mean to You?," I wrote:

More than a few trademark types cringe when their clients or others say things like "let’s trademark it," "they didn’t trademark their logo," or "we don’t want to trademark this name," and, when they ask questions like "is it trademarked?" or "is that trademarked software?" or "did we ever trademark our logo?" or "should we be trademarking this packaging?"

Indeed, some have written: “’Trademark’ is not a verb. There is no such thing as ‘trademarking’ a word or phrase." Similar views are expressed here, here, and here.

Well, a couple more of the cringers have raised their hands.

Our good friend John Welch over at the TTABlog reported yesterday that he doesn’t like "seeing the word ‘trademark’ used as a verb," and he republished a recent article by Daniel Kegan entitled "The grammar of intellectual property: Copyright is a noun, trademark is an adjective," originally published by the Illinois State Bar Association, linked here. In his article, Mr. Kegan similarly writes: "Trademark is an adjective, not a verb."

Actually, according to the English dictionary, "trademark" is both a noun (you know, a person, place or thing?) and a verb (an action):

trade·mark

–noun

1.

any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant in order to designate his or her goods and to distinguish them from those manufactured or sold by others. A trademark is a proprietary term that is usually registered with the Patent and Trademark Office to assure its exclusive use by its owner.
2.

a distinctive mark or feature particularly characteristic of or identified with a person or thing.
–verb (used with object)

3.

to stamp or otherwise place a trademark designation upon.
4.

to register the trademark of.

Indeed, even this quote from Mr. Kegan’s article confirms the proper use of "trademark" as a noun: "A trademark is obtained by use." This is a correct statement of fact and law, but the word "trademark" is clearly the object — the thing — of this sentence, i.e., the noun. Furthermore, with respect to the proper use of "trademark" as a verb, as I have previously written:

[T]he words "trademark," "trademarked," and "trademarking," are recognized words with established verb meanings that have formed part of the English language: "(1) To label (a product) with proprietary identification; and (2) to register (something) as a trademark." Moreover, the word "trademarked" has an established adjective meaning too: "labeled with proprietary (and legally registered) identification guaranteeing exclusive use; ‘trademarked goods’".

From my perspective, there is no need for cringing or even correction, just further inquiry into how the words "trademark," "trademarked," and "trademarking" are being used.

Given the various definitions for these words, the speaker might mean labeling a product or advertising material, utilizing or marking such materials with the appropriate trademark notice or symbol, registering a trademark or service mark, or perhaps, all of the above. Since the described actions (labeling and registering) are quite distinct, it becomes important to seek clarity on the speaker’s intended meaning.

So, again, really, what’s the big deal?

No need to cringe, in my humble opinion, this is just another example of where the use of a word in the English language begs for some follow-up questions by the listener to clarify the speaker’s intended meaning. Seems to me this potential for confusion is an opportunity for us trademark types to engage the speaker by asking some questions and then offering to explain and enlighten.

Where do you camp on this issue? Are you a cringer when it comes to IP grammar?