Daily Archives: January 22, 2009

What to do with those pesky ™ and ® symbols, and when to use them

Ilene Stritzver at CreativePro.com offers handy tips for creative professionals in typesetting the trademark (™) and registered trademark ® symbols. Her article discusses what fonts to use, how to place the trademark symbols, what sizes should be used, and how to adjust the fonts for ugly trademark indicators.

Ms. Stritzvers example of a registration symbol too big, just right, and too small

Ms. Stritzver's example of a registration symbol too big, just right, and too small

But in addition to placement of the symbols, here’s a quick primer on their use and application, if you’re new to the trademark world.

Many creative professionals–and even many attorneys–do not know the difference between the ™ and the ® symbols, or when they should be used.

In the United States, the ™ symbol is used in connection with trademarks that have not been registered with the U.S. Patent & Trademark Office. It can mean that an application is on file, or it can mean that, even though no registration has been sought, the trademark owner claims “common law” or state trademark rights.  Adding the ™ notice is very important, because it is the only way to communicate to the public and to competitors that you’re claiming this word as a trademark. Should a competitor come along later and use a similar trademark on similar goods and services, and you try to make them stop, it is easier for them to argue that (a) they believed you were not using the term “in a trademark sense” but were using it “descriptively” or just as part of plain language, or (b) that, at a minimum, they were not “willfully infringing” on your trademark (which gives the mark holder additional remedies) because you had not provided the notice to the world that you were claiming exclusive rights to use the mark.

In the U.S., “®” is the designation for trademarks that have been registered with the USPTO. Not with your secretary of state, not with any state trademark authority, not with any third-party “registration service,” but with the federal government.  In the United States, trademark rights are acquired upon use rather than registration; however, there are legal advantages to registering a trademark federally.  These include a presumption of validity, a clear date of first use, and nationwide priority at least as early as the date of registration.  Therefore, there is a (slim) possibility that if a person uses an ® symbol improperly, the rights holder could forfeit some of her rights in the trademark (because the trademark owner falsely asserts federal trademark rights in a mark for which they have not received a federal registration).

Technically, there is one more trademark designation missing — “sm” for “service mark.” A service mark is a mark that is used in connection with services rather than goods. Thus, COCA-COLA for “soft drinks” is a trademark, and COCA-COLA DAY (if it existed) for “charitable fundraising services” would be a service mark.  Section 3 of the Lanham Trademark Act recognizes that service marks are “registrable, in the same manner and with the same effect as are trademarks,” and the law does not otherwise substantially distinguish between a trademark and a service mark.  (There are a few minute differences; for example, the USPTO will accept advertisements as “specimens,” or proof of use of the service mark, whereas it will not accept pure “advertisements” for trademarks.) The ® symbol is applied both to registered tradmarks and service marks, but technically “sm” should be applied to unregistered service marks, while ™ should be applied to unregistered trademarks.  The problem, of course, is that there is no ASCII “sm” character, which means that adding an “sm” character, especially in body text, can be cumersome and annoying.  I am not aware of any case that holds that ™ is improper notice for a service mark, but then again, I’ve not looked for such a case.  In other words, if you’re really nervous about giving notice about a particular tradmark, err on the side of caution and use “sm”.

(Please note that ™, “sm,” and ® refer only to trademarks, and not copyrights or patents.)

A thorough trademark attorney, in house counsel, or even a design professional adding the trademark symbols to logos, should be aware of the differences and might want to confirm the status of any trademark periodically when new logos or publications are designed.

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Obama retakes oath; Chief Justice doesn’t learn his lesson?

As reported by the ABA Journal here and by MSNBC here, President Obama retook the oath of office last evening in the map room, due to the bungle of Chief Justice Roberts, which Jim Lindgren at the Volokh Conspiracy attributes to the Chief Judge’s inappropriate adherence to the fifth edition of the Texas Manual of Style‘s bogus requirement that a helping verb and the main verb not be split by an adverb. I just think that Roberts forgot because he was nervous and didn’t bring a cheat sheet, like Justice John Paul Stevens did when he swore in Vice President Biden (video here via Yahoo).

I guess the Chief did not learn from his mistake, and at least according to this photo, once again administered the oath without a cheat sheet:

According to this photo from the White House (via MSNBC) it looks like the Chief Justice once again danced the high wire without a net

According to this photo from the White House (via MSNBC) it looks like the Chief Justice once again danced the high wire without a net

According to the articles, the oath was re-administered because of fears that “conspiracy theorists” would continue to believe that Obama’s presidency was not legitimate, a theory that’s been circling on the Internet since the inauguration:

Craig, the White House lawyer, said in a statement Wednesday evening: “We believe the oath of office was administered effectively and that the president was sworn in appropriately yesterday. Yet the oath appears in the Constitution itself. And out of the abundance of caution, because there was one word out of sequence, Chief Justice John Roberts will administer the oath a second time.”

The Constitution is clear about the exact wording of the oath and as a result, some constitutional experts have said that a do-over probably wasn’t necessary but also couldn’t hurt. Two other previous presidents have repeated the oath because of similar issues, Calvin Coolidge and Chester A. Arthur.

Article 2, Section 1, Clause 8 of the Constitution states:

“Before he enter on the Execution of his Office, he shall take the following Oath or Affirmation:

“I do solemnly swear (or affirm) that I will faithfully execute the Office of President of the United States, and will to the best of my ability, preserve, protect and defend the Constitution of the United States.”

That sounds to me that, even though the President “becomes” President by operation of law at Noon, before he can take any action as president “enter on the Execution of his Office,” Obama had to take the oath provided for by the Constitution. I think that the Constitution probably doesn’t require a word-for-word recitation of the oath, so long as what was recited recognized that the new president affirms that he will execute the office and preserve, protect, and defend the Constitution.  What if the new president were deaf and had to sign the oath? American Sign Language would not necessarily be a word-for-word translation of the oath (unless each letter were spelled out; unlikely).  Yet, certainly someone using ASL to take the oath would be considered to be president.  Or what about a president who may have a lisp who says “I do tholomy thwear…”?  Once again, I’d say that’s no problem. And the Chief Justice’s acceptance of the oath as sufficient likey ends the inquiry. And who would have standing to challenge the inefficacy of the oath?

But whether or not Obama had to re-take the oath, I’m not sure this will have the desired effect.  Why? Because conspiracy theorists will continue to question the illegitimacy of the president. Not that they need any help, but here are a few more ideas:

  • The President took a variety of executive actions on Tuesday and Wednesday, including nominating cabinet positions.  If the Oath was improperly administered, (which the President implicitly admits by re-taking the Oath) aren’t all of those actions legally invalid?  And if the invalid actions include the nomination and appointment of, for example, Hillary Clinton as Secretary of State, aren’t all of her subsequent actions as SoS invalid?
  • None of this matters anyway because, according to many conspiracy theorists, Obama was not born in the United States, thus he could never be president to begin with.
  • How can a guy be president when his chief white house counsel is a guy named “Greg Craig“?

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