Intellectual property assets are valuable. One way to maintain the value of those assets is to correctly use the applicable notice, shown as symbols or specific phrasing, that publicly designate the type of protection claimed.
Trademarks, service marks, copyrights, and patents are different types of assets and have their own unique type of notice. Trademarks distinguish the source of goods and services of one party from another; if a distinction needs to be made, service marks specifically distinguish the source of a service. Original artistic or literary works are protected by a copyright. Utility patents protect inventions, and design patents protect the aesthetic design of products rather than the functional aspects thereof.
A trademark is a brand name, logo, slogan – and possibly, a color or sound – used by an individual, company, or business to indicate the source of their product or service. A trademark may be registered with the US Patent & Trademark Office (USPTO), or not. In either case, it is recommended that the owner of the trademark apply notice every time the trademark is displayed on the product or its packaging, or in any document (such as an invoice or purchasing order), catalog, website, brochure, or other promotional material, like this: APPLE® or APPLE™.
If the trademark is registered with the USPTO, the owner is entitled to use the ® symbol on any goods or services sold or offered in the US to indicate its registered status. However, the ® symbol may only be used in connection with the goods or services specifically identified in the federal registration, and not for other goods or services a business may offer. If the trademark is not registered, the owner should use the ™ or ℠ symbol; again, the ™ symbol can be used on any trademark or service mark, and the ℠ symbol should be used on any service mark.
Trademark notice is not mandatory, but highly recommended as it alerts others to your claim of trademark rights and helps maintain the validity and strength of the trademark. A trademark owner can work with its marketing team to determine where and how to use trademark notice, if at all, as we recognize sometimes visual and space constraints, as well as jurisdictional issues, must be taken into consideration.
A copyright is a work of authorship that is original and fixed in a tangible form (i.e., it is written down or recorded). Such works include books, musical compositions, sculptures, paintings, architectural works, and the like.
Copyright protection exists from the moment a work is created, and as with trademarks, registration is voluntary. Whether or not a copyright owner has registered its work with the US Copyright Office, it is recommended that copyright notice be applied when a work is created and updated each time the work is changed. Copyright notice is not required for works first published on or after March 1, 1989, but highly recommended as it alerts others to your claim of copyright and helps maintain the validity and strength of the copyright.
Copyright notice for both registered and unregistered works typically includes these three items: the © symbol, the year the work was first published, and the copyright owner’s name, like this: © 2018 Jane Doe.
A U.S. patent may cover any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, and the patent gives the inventor the exclusive right to exclude others from making, selling, or using the invention.
When a patent application has been filed with the USPTO, the inventor may mark their product with Patent Pending or Pat. Pend., for as long as the application is still pending before the USPTO. The use of the Patent Pending or Pat. Pend. language confers no real legal benefit to the inventor. However, an inventor is well-served to use the phrase to at least inform the general public that the inventor has filed a patent application on that product and that a patent may eventually issue protecting that product, thereby potentially deterring blatant copying.
Once a patent has issued, the inventor may begin marking the patented product (or if the nature of the product does not allow it, the packaging of the product) with the patent number(s) issued by the USPTO. Acceptable formats include U.S. Patent No., Pat. No., or similar language, followed by the number. This puts the public on constructive notice regarding the patent(s) and in certain instances, is a requirement in order for an inventor to be able to collect monetary damages that may have accrued prior to the filing of an infringement complaint in court. If the product becomes the subject of a new or updated patent, then the number(s) marked on the product needs to be updated. The inventor should also make sure that any and all licensees also mark their licensed products with the relevant patent numbers.
As of 2011, a patent owner also has the option of virtual marking, which was introduced in an effort to alleviate manufacturing expenses and to promote continuous updating of patent information. With virtual marking, the patent owner may replace the patent number in a traditional marking with a free and publicly accessible internet address, for example, Patent www.example.com/patents or equivalent. All relevant patent numbers can then be listed at that URL.
Whether traditional or virtual marking is used, marking your patented or pending patented products is a useful tool in the broad strategy of protecting your IP portfolio. Care should be taken when marking, however, as doing so improperly (such as by marking a product as Patent Pending before an application is filed) can lead to penalties.
Talk To Your Attorneys
The trademark, copyright and patent attorneys at Panitch Schwarze are available to answer any further questions you may have about notice and marking. Contact us today for more information.