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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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+25

Copyright

The © copyright symbol (or equivalently the word "copyright" or the abbreviation "copyr", the actual symbol does not have to be used and is an abbreviation itself, or ℗ for a sound recording copyright) is used exclusively to claim copyright for yourself. If the copyright holder fails to do so, the copyright holder loses certain rights. Specifically, notice makes it much harder for a defendant to establish that that the alleged infringer-defendant is an "innocent infringer" and thereby is subject to a much lower minimum on statutory damages.

Trademarks and Service Marks

A trademark holder also secures certain rights by putting people on notice of the existence of a claim of trademark with the appropriate symbol (® if it is registered trademark or service mark, and tm for trademark or sm for service mark, if it is not a principle register mark under the Lanham Act).

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 honesty 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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  • 1
    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
  • 1
    "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." This was true in the US, although the word "copyright" or the abbreviation "copyr" always had the same legal effect. But since the 1976 Copyright act, the notice is optional by statute, and the only legal effect of a notice is it makes it much harder for a defendant to establish that s/he is an "innocent infringer" and thereby have a much lower minimum on statutory damages. Otherwise the symbol no longer has any legal effect in the US. Oct 17 at 2:47
  • @DavidSiegel Revised answer to clarify per your comment.
    – ohwilleke
    Oct 18 at 23:34
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The only thing a 3rd party gains 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 3rd party to use such symbol other's trademarks.

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

Most of the time I have encountered 3rd 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
  • -1 Not correct, the trademark symbols can show respect for another's mark, and can help avoid an infringement claim. They are often so used Oct 17 at 2:51
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In the U.S., the Trademark Dilution Revison Act, 15 U.S.C. § 1125(c), entitles a trademark holder to an injunction against someone who

commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

Back in the mid-’90s, when the first version of this act passed, I was warned by a lawyer that some companies were very zealous about trying to stop their trademarks from becoming generic names, and considered this “dilution by blurring.” So, if an author didn’t want to get sued, and possibly have an injunction prevent his or her book from shipping, he or she should always have characters ride “a Harley-Davidson brand motorcycle” and not “a Harley,” and certainly never say they “xeroxed” anything.

In that discussion, “Alice rode a Harley™” or “Bob pulled out a Kleenex®” were brought up as absurd reductios. (And I remember someone else pointed out that Stephen King broke this rule and got away with it.) Few if any cases like that ever went to trial, but there might have been some cease-and-desist letters that got someone to change a name to avoid trouble, and I’m certain, from the number of writers I’ve heard bring this up, that it’s led to a lot of self-censorship,

I knew people whose job, at a large corporation, was to search for anyone using one of its trademarks without permission and send them a form letter. (This didn’t, to my knowledge, go so far as to threaten a writer over mentioning the brand name in a story.) The company would rather have let most of it slide than spend money just to make people mad at them, but the higher-ups worried that, if they didn’t at least leave a paper trail to prove they’d defended their mark, they could lose it.

The law was later revised in 2006 to add broader and less ambiguous protections for “fair use” of a trademark than had been there previously. Some examples were the right to describe a product, to review or criticize it, and to report on it. If you’re referring to a trademark in a context where those exclusions would not apply, acknowledging that someone else’s trademark is a trademark might possibly protect you from a trademark-dilution claim—although you would definitely want to avoid doing that in a way that might suggest to anyone that you owned the trademark.

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  • Surely the right to use a trademark to review or otherwise denote a product predates 2006. To what law taking effect in 2006 are you referring?
    – phoog
    Oct 18 at 9:43
  • @phoog As I said, the Trademark Dilution Revison Act expanded the statutory fair use exemption. As you say, courts had previously recognized such a right. For example, New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (1992).
    – Davislor
    Oct 18 at 16:26
  • @phoog In fact, the whole trademark-dilution mess was judges thinking they were helping. They thought they were giving ordinary people the right to use common words that technically were trademarks. The unintended consequence was, even completely innocent use could now cost a corporation a lot of money, by destroying its trademark. So, even companies that would rather have let something slide, felt they had no choice but to take legal action over everything now. And then Congress made what the judges meant as a defense, illegal.
    – Davislor
    Oct 18 at 16:35
  • Ok, I thought you meant to say that "the right to describe a product or to review it" was something that was added in 2006, but, if I understand correctly, you were just offering examples of "fair use."
    – phoog
    Oct 18 at 20:16
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    Ok, but it was never a violation of trademark law to write a story in which someone drank a Coca Cola or to write an article about Coca Cola or any other product of the Coca Cola company. That is inherent in the nature of trademark protection since words began enjoying trademark protection in the 19th century. It did not begin in the 1990s.
    – phoog
    Oct 18 at 22:45

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