The importance of intellectual property notices

by McAfee & Taft
Contact

So you have a patent, trademark, or copyright that you want the public to know you have rights in? How do you provide such notice? The answer is marking your intellectual property (IP) with symbols such as Pat., Pat. Pending, ®, TM, SM, and ©. These symbols provide the public with notice that you have acquired certain rights in and to the marked IP.

Why should you provide notice with the intellectual property symbols?

Although notice is not entirely mandatory, there are distinct advantages to providing notice with the IP symbols. IP symbols provide visual notice that certain IP rights are claimed in the subject matter marked, discourage infringement, and prevent others from claiming they were unaware of any rights claimed in the marked subject matter, which may permit the IP owner to collect increased damages for willful infringement.

Are there consequences for improperly using or not using intellectual property notices?

If a patent symbol is used incorrectly, penalties, including fines of up to $500 per offense, may be assessed against the entity or person responsible for the incorrect use for "false marking." (One example is marking a product as "pat. pending" when no patent application has actually been filed.) In some countries, using an improper patent notice amounts to a criminal offense. Failure to use copyright or trademark registration symbols can impact the IP owner's ability to recover full damages arising out of an infringement of the intellectual property.

How should the intellectual property symbols be used to provide proper notice?

Patents:
The most common symbols used to provide notice of patent protection are:

  • "Pat. Pending" — used to evidence that a patent application has been filed with the U.S. Patent and Trademark Office (USPTO).
  • "Patent" or "Pat." followed by the patent number — used once a patent has been issued.

There are two ways to provide adequate notice to the public of patent protection.

  • Actual notice requires the owner of a patent to directly inform a person or entity of the issued patent. This type of notice is typically used to inform an infringer that they are offering or selling a product that infringes a particular patent.
  • Constructive notice may be provided by affixing a label to the product that uses either the term "patent" or "pat.," followed by the patent number, or through "virtual marking," where the label uses "patent" or "pat." followed by an internet address. The internet address must be freely available to the public and must clearly identify currently enforceable patents associated with the identified product providing the correct patent numbers.

Trademarks:
The most common practice to provide notice of trademark protection is to use ®, TM, or SM. The ® symbol may only be used for trademarks registered by the USPTO. The TM symbol is used with marks that have not been registered by the USPTO. These can include marks that are the subject of an application pending before the USPTO as well as marks that are not even the subject of an application pending before the USPTO. The SM is used to distinguish the source of services.

Copyrights:
The most common practice to provide notice of copyright protection is to use © or ?. The © symbol is used with published and unpublished works, including literary, artistic, dramatic and musical works (songs and novels), as well as software and architecture. The ? symbol is used to designate copyright protection in a sound recording. Unlike trademark registration (®) or patent symbols, the copyright symbol may be used even if the owner has not sought a registration in the U.S. Copyright Office.

Although notice of a copyright is not required, it must be used correctly if it is used at all. For example, for visually perceptible copies of works, the following three elements are necessary for proper notice: (1) the symbol ©, or the word "Copyright", or the abbreviation "Copr."; (2) the year of first publication of the work; in the case of compilations, or derivative works incorporating previously published material, the year date of first publication of the compilation or derivative work is sufficient (Note: The year date may be omitted where a pictorial, graphic or sculptural work, with accompanying text matter, if any, is reproduced in or on greeting cards, postcards, stationery, jewelry, dolls, toys or any useful articles); and (3) the name of the owner of the copyright in the work, or an abbreviation by which the name can be recognized, or a generally known alternative designation of the owner.

Although not mandatory, improper or lack of notice to the public of IP rights does have its pitfalls. As such, businesses should consult with legal counsel familiar with the various IP notice standards to assist them in determining whether they have provided proper notice to the public of their IP rights.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McAfee & Taft | Attorney Advertising

Written by:

McAfee & Taft
Contact
more
less

McAfee & Taft on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.