The importance of intellectual property notices

published in McAfee & Taft tIPsheet | September 5, 2017

By Chase C. Webb

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?

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.

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.

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.