®?

August 10, 2005 9:19 AM

Is there any legal reason that a registered trademark symbol (®) HAS to be a capital letter "R" inside a perfect Euclidean circle, even in a typeface that renders other round characters like "O" and "0" otherwise? I'm willing to let the "R" go, but our QA department at my job insists that only a true circle is legal. For examples of fonts that use other-than-round ® signs, see here, here, and here(That last example might be too extreme, admittedly). The USPTO website says nothing about typefaces.
posted by 40 Watt to Law & Government (31 answers total)

Copyright is automatically given to an author the minute they publish their work, regardless of whether they mark it with an r in a circle (perfect or otherwise).
posted by Popular Ethics at 9:24 AM on August 10, 2005

Trademarks, registered or otherwise, have nothing to do with copyright at all.
posted by mendel at 9:25 AM on August 10, 2005

Response by poster: Yeah, guys, I'm not really worried about copyright, I threw that tag in there as an afterthought. I'm more concerned with typography and style than anything else.
posted by 40 Watt at 9:29 AM on August 10, 2005

The R in a circle is the standard registered trademark mark. I can't imagine why you'd take any risk with it at all.
posted by kindall at 9:29 AM on August 10, 2005

Sorry. After careful re-reading, your question is about trademark, which is different than copyright (the c confused me. I'm used to seeing "TM"). I haven't read anything about the proper annotation of a trade mark, so I'll step aside now.
posted by Popular Ethics at 9:31 AM on August 10, 2005

Response by poster: It's complicated, kindall. I'm working on a video game and we only have room for a certain number of typefaces per game. It's also very difficult and time-consuming, with the software we use, to replace or remove characters. The font we're using is fine everywhere else in the game except for this one character, and I want to know if there's any LEGAL reason for having to swap the character.
posted by 40 Watt at 9:33 AM on August 10, 2005

I AM NOT A LAWYER: But you have a REGISTERED trademark. The registration is the important thing, along with the notice of registration. There is no judge in America who would allow infringement upon that trademark under the theory that since the R wasn't in a perfect circle, your notice was invalid. (Also note, that video game title screens have used the R-in-octogon to mean registered trademark since the days of Atari.)
Ask your legal counsel to provide cites from caselaw.
posted by klangklangston at 9:34 AM on August 10, 2005

I can't see why.. a trademark is still registered regardless of a specific symbol being used. As far as I understand it, as long as the company demonstrates their ownership of the trademark, it remains theirs. IANAL.
posted by wackybrit at 9:35 AM on August 10, 2005

The text of the Lanham Act states:

Notwithstanding the provisions of section 1072 of this title, a registrant of a mark registered in the Patent and Trademark Office, may give notice that his mark is registered by displaying with the mark the words “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the letter R enclosed within a circle, thus ®; and in any suit for infringement under this chapter by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration.

So cover your butt and use an R in a real circle along with a registered trademark. My non-legal mind seems to parse this as if you don't assert your registered trademark in such a way, you won't get any damages awarded to you in court.

While not entirely helpful in this case, there's a great, in-depth article about trademarks on Wikipedia, and a decent one on US trademark law so you can brush up on the many gray areas in trademark law.
posted by zsazsa at 9:44 AM on August 10, 2005

I'm working on a video game
Well then it shouldn't be an issue at all.
Unless the symbol takes up an inordinate amount of screen space, it's hardly going to be a perfect circle anyways by the time it gets rendered out into pixels.
posted by juv3nal at 9:44 AM on August 10, 2005

I'm not clear: is yours in something like an octagon, like in the linked typefaces, or is it in an oval?
posted by smackfu at 10:18 AM on August 10, 2005

Response by poster: it's in a rounded rectangle....somewhere between a circle and a rectangle.
posted by 40 Watt at 10:30 AM on August 10, 2005

If it has to be a perfect Euclidean circle, every video game ever made has lost their protection. Don't worry about it.
posted by Jairus at 10:31 AM on August 10, 2005

From my friend, who's a law clerk in a huge copyright/trademark law firm:

"I don't think it has to be in a particular font, or even in a perfect circle - you can indicate a trademark is registered just be putting "registered mark" next to it (in words.) When you register a trademark in block letters, you can use it in any font you want."
posted by GaelFC at 10:38 AM on August 10, 2005

I've searched but I don't think there is any federal case law on this. I don't think an ellipse or an octagon is a circle. A judge might say that it counts. Or they might not.

You can just write "Reg. U.S. Pat. & Tm. Off." instead and avoid the problems, if it's only one thing you need to declare notice of registration for.
posted by grouse at 10:41 AM on August 10, 2005

See zsazsa's comment above. The R in a circle is but one way to express that the mark is registered. Use text instead. Standard form would be to put an asterisk to denote a footnote after the mark and then in the asterisk footnote put the required text. Alternatively, you could put the text into parentheses after the mark. If you are going to use the R in circle I would think the important thing is that it be recognized as such. Perfection of the circle is for anal retention only. Your first linked font looks like an R in a circle to me, the second two aren't even close.
posted by caddis at 11:02 AM on August 10, 2005

Response by poster: Unfortunately, I can't write out the text because it's a technical requirement from Sony that we use the symbol. However, I think Jairus is on the right track. After digging around on KLOV for a while, I came up with this fascinating gem:



Notice the *square* trademark symbol? (Although it must be noted that they still put the © and (P) characters inside proper circles....)
posted by 40 Watt at 11:04 AM on August 10, 2005

Everyone seems to have made good points here and it looks like you probably don't really have to do this, but if your QA department won't back down couldn't you have your tech guys hack the font? So, you could use the same font but they could replace the font-specific ® symbol with whichever one is considered official.
posted by ducksauce at 11:41 AM on August 10, 2005

I was going to suggest you write your own font, with one character. However, if you can get into their font table and replace just one character, then what ducksauce said, unless of course the font license prohibits this.
posted by caddis at 11:55 AM on August 10, 2005

Note that every occurrence of the above symbol in my browser renders as, you guessed it, an octagon. At least as far as I can tell, it's got 8 straight sides. Food for thought.
posted by RikiTikiTavi at 12:03 PM on August 10, 2005

While the text of the Lanham act specifies that the R be enclosed in a circle, the intent of the law is to provide notice to others that your company has registered the title name with the US Patent and Trademark Office. I can't imagine a judge alive today that would take such trivial formality to the extreme of denying trademark protection for a work based on the shape around the R. So long as a reasonable person would be able to tell that you are claiming trademark protection using your oval-R shape then you should be fine.
posted by thewittyname at 12:05 PM on August 10, 2005

Well, pay close attention to the text zsazsa posted. It says "circle" not "perfict circle". But all it says is that you can't recover damages if it's not in a "circle". You can probably stop people from using the trademark even if you can't recover damages, which you probably won't have anyway.

You may not know this, but actualy you need to register your copyrighted works with the Library of Congres in order to recover damages, otherwise all you can do is get people to stop using it.

But I don't think you're legaly required to have a *perfict* circle anyway. Just make a 10x10 pixel as an image and use that. Nice and small and unobtrusive.
posted by delmoi at 12:15 PM on August 10, 2005

If you're worried, why don't you just use the text version of the protection that zsazsa copy/pasted? The law seems clear that you have the choice.
posted by shepd at 12:38 PM on August 10, 2005

IANAL, but the shape around the R doesn't matter. You're just notifying the viewer that the property in question is registered. Oftentimes the circle-R is accompanied by text at the bottom of the page/screen that lists the full legal text. So the registered mark acts as sort of an asterisk or numeric superscript that indicates a reference, usually either that the bottom of the page or at the end of the document. So you see the circle-R and at the bottom of the page it explains that "So-and-so is a registered trademark of My Company."
posted by robbie01 at 1:28 PM on August 10, 2005

Without passing judgment on whether the non-lawyers here have it right, I would not rely on their opinion, however well-intentioned, when making a decision that can potentially lead to problems down the road. I strongly recommend that you consult a trademark attorney on this issue, if you are concerned about maintaining the trademark and the right to sue for damages or injunctive relief for any violations of it. Or at the very least, ask an in-house counsel or, if you don't have any, your usual outside counsel. Since you are paying them (and they are subject to malpractice suits), they are more likely to give you a thoroughly researched answer, if not necessarily the correct one. Don't rely on common sense. In the law, common sense only works about 80% of the time, if that.
posted by EatenByAGrue at 2:39 PM on August 10, 2005

Oh, and just because something's been done a certain way before (e.g., the non-circle used in previous video games) doesn't mean that it is the correct way to do it now (or that it was correct back then, for that matter). Law, especially in a rapidly changing field like intellectual property, is not a constant.
posted by EatenByAGrue at 2:42 PM on August 10, 2005

It's a circle because it's a symbol... just like a stop sign is an octagon. It's not more elliptical like an 'O' in a compressed or condensed font, because it's an R in a circle, not an R in an O.
posted by Robot Johnny at 2:50 PM on August 10, 2005

There was, I believe, one case where a copyright notice in a video game was ruled valid despite the fact that the C was in a hexagon (it was a vector graphics arcade machine, I think, a true circle would have been nearly impossible). If your ® is reasonably close to a circle, such that the intent is clearly to convey the mark's status, I think it should be fine, but it'd probably be worth an hour of a trademark lawyer's time to be 100% sure. The advantage of using the R in a real circle is that you don't have to do that, which is why I suggested it.
posted by kindall at 6:51 PM on August 10, 2005

kindall: Copyright is a different issue and has almost no bearing on trademark. Copyright is automatic and may be enforced arbitrarily. Trademark, on the other hand, requires registration and must be aggresively enforced (or you risk losing it).

Really, just about *any* notice will protect a copyrighted work, presuming that it's dated. The circled-C symbol is simply a legally-acknowledged shorthand for the word "copyright".

The trademark circled-R, however, is *required* on registered textual trademarks. Whether or not a slight deviation from a perfect circle is acceptable or not, I will not venture a guess.

This is my understanding, at least. But, IANAL, and I have never personally dealt with trademark--I've done a fair bit of work with copyright, however.
posted by Netzapper at 10:12 PM on August 10, 2005

Copyright is a different issue and has almost no bearing on trademark. Copyright is automatic and may be enforced arbitrarily.

That's true now, but the case I mentioned was, IIRC, pre-Berne Convention, when the copyright notice was in fact required. Notwithstanding the differences between copyright and trademark (which I am well familiar with) I think it would still work as a precedent because the ruling was not about copyright per se, but about the required degree of circularity of a symbol. If one law says a C-in-a-circle is required and the courts have accepted a hexagon as valid, then I think you'd have pretty decent luck using that to support a contention that a similar law requiring R-in-a-circle does not actually require a literal circle.
posted by kindall at 12:12 AM on August 11, 2005

But you'd still want to consult a lawyer to be sure. Or else try it and have it tested in court, but that's likely to be a bit more expensive.
posted by kindall at 12:13 AM on August 11, 2005