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Background

This question on Academia SE asks whether one should append a trademark symbol to trademarked software in academical writing, e.g. “Mathematica®”. In the answers and comments (e.g., here, some users uttered the unreferenced opinion that this is sometimes necessary to avoid infringing the trademark holder’s rights. This is contrary to my understanding of the purpose of these symbols: Most references only mention the benefits arising for the trademark holder. In this US-specific source, it is explicitly said that using the trademark symbol is the responsibility of the trademark holder.

Something similar applies to the copyright symbol ©.

However, there seems to be a common belief that using such symbols next to in writing is legally required or at least beneficial – even if you are not the trademark or copyright holder. I am asking this question, as I hope that it gives me a good general argument against the seemingly blindly obedient uses of such symbols.

Actual question

Is there any situation in which using any symbol indicating intellectual property (©, ℗, ®, ™, ℠) together with a given trademark or other item of intellectual property provides a legal benefit for somebody

  • who is not the holder of the intellectual property or affiliated to them,
  • who has not signed a contract or similar requiring them to use the symbol?

I am not asking with respect to a specfic jurisdiction, though I am primarily interested in jurisdictions in which the Universal Copyright Convention or the Berne Convention apply.

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The only thing a 3d party gain from using those symbols is that is shows they recognize the 1st party's trademarks. There might possibly be some situation (e.g., contractual) where it could provide an advantage.

In nearly all cases there is no reason for a 3d party to use such symbol other's trademarks.

In using such a symbols it might appear that the 3d party is [inadvertently] claiming the mark; a downside.

Most of the time I have encountered 3d parties using these symbols it has been the result of someone being cutsie.

Your source is correct, such marks are for the benefit of the mark holder.

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    Can you further back up your claims? – Wrzlprmft Mar 25 '17 at 12:36
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The copyright symbol is used exclusively to claim copyright for yourself. If the copyright holder fails to do so, the copyright holder loses certain rights.

A trademark holder also secures certain rights by putting people on notice of the existence of a claim of trademark with the appropriate symbol (r if it is registered, tm if it is not).

The various trademark symbols when used by a third party are being used in a circumstance when the third party isn't using it to sell the trademarked good in a manner that acknowledges that the trademark belongs to someone else and is protected in much the same way that an academic might footnote an idea or quotation to attribute that idea or quotation to someone else.

Aside from the academic/journalistic honest idea of acknowledging and attributing something that is not yours to someone else, it could also protect you from a trademark dilution lawsuit.

If a trademark is used without attribution as a generic term for everything in the same class of goods that the goods sold under the trademark belongs to, it will become diluted and come to have only the general meaning of something belonging to that class of goods and not the specific secondary meaning associated with a trademark of a particular good within that class which is sold by the trademark owner.

For example, if everyone started using the word "Nike" without a trademark symbol to refer to running shoes even if they weren't made by the Nike company, the trademark "Nike" would become diluted and no longer be protected by the law. But, the Nike company can nip that process in the bud by bringing anti-dilution suits against people who use the term in the general sense rather than to refer only to goods made by them.

When you acknowledge with a trademark symbol that the right to use the name to sell goods is limited to them selling their goods, you are weakening the case that someone who wanted to bring an anti-dilution suit against you would have and clarifying that you are using it to refer to their goods (which is proper) rather than to sell goods which are not theirs (which is improper).

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    Can you back up your claims with references or precedents, in particular “it could also protect you from a trademark dilution lawsuit”? All cases of such suit that I can find at a first glance are about a more active dilution, e.g., by using a name similar to the trademarked one for a brand. – Wrzlprmft Mar 25 '17 at 12:51
  • I will try to find some. It isn't a really simple thing to find case law upon, but maybe I could find a treatise reference. – ohwilleke Mar 27 '17 at 2:02

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