The case of the vanishing ™

Question

I moved from the United States a few years back. Recently, someone visited the U.S. and brought back some "junk food" that my family missed, including Milk Duds and Oreos. I was shocked to see that the stylized words "Milk Duds", "Oreo", and "Nabisco", forming logos, did not have trademark symbols next to them, nor was there any notice on the packaging that those things were trademarks. I'm pretty sure that, just a few years ago when I lived there, all such packaging had indication of trademark status. Did the law change since then? Can someone provide details, please? (Or maybe those three marks happened to lose their trademark status and are up for grabs?)

Answer 1

Trademark symbols

Such symbols and notices were never required. Many company lawyers thought that they helped make a stronger case for infringement actions if someone did infringe. And perhaps also that they would deter people from using the trademarks without approval, perhaps even in ways that were legal but that the company did not like. (Companies routinely claim more trademark protection than the law allows.)

Added, legal and source citations

[15 U.S. Code § 1111] provides](https://www.law.cornell.edu/uscode/text/15/1111):

Notwithstanding the provisions of section 1072 of this title, a registrant of a mark registered in the Patent and Trademark Office, may give notice that his mark is registered by displaying with the mark the words “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the letter R enclosed within a circle, thus ®; and in any suit for infringement under this chapter by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration. emphasis added

This section was last revised in 1988, and dates originally from 1946

The US patent and Trademark Office (USPTO) publication Basic Facts About Trademarks (PDF) says (on page 9):

Each time you use your mark, it is best to use a designation with it. If registered, use an ® after the mark. If not yet registered, use TM for goods or SM for services, to indicate that you have adopted this as a trademark or service mark, respectively, regardless of whether you have filed an application with the USPTO. You may only use the registration symbol with the mark on or in connection with the goods/services listed in the federal trademark registration. However, no specific requirements exist as to the precise use of the “®” symbol as to placement, e.g., whether used in a subscript or superscript manner. emphasis added

Added Analysis

I cannot find any provision of US law requiring use of the ® symbol or any of its equivalents. However failure to use it may reduce the damages available in the case of infringement.

I cannot find any provision of US law authorizing or requiring the use of the tm symbol. It appears to be a matter of common law, that is judge-made law, and a reference to court cases would be needed.

There have been significant developments in US trademark law in recent years, but mostly in the degree to which First Amendment concerns are being held to limit tr4ademark protections. I found no change in regard to the symbols, their use, meaning or effect.

Many countries, unlike the US, do not grant protection to trademarks unless they are registered, so the tm symbol is largely a US usage.

What Changed?

To the best of my knowledge, there has been no change in US law on this issue in recent years. I see lots of tm and ® symbols on everyday products. I just looked at the power supply for my laptop and it has a tm after the maker's name. I just looked at a candy bar wrapper and it carries an ®. If there WAS a recent court case that changed the practice or influenced a change I haven't heard of it, and I've done some reading in recent major trademark cases. But I am not a lawyer, much less an IP lawyer, so I can't be sure.

Another possibility is that the comparatively large symbol adjacent to the large logo on the front of the package was removed, and a smaller logo, with symbol, was placed on the back of the package. That would probably give legal notice to any would-be infringer.