Request from a municipality to remove TM or ® from a sign?

[SignProPlus-Chip]

Does anyone know what the legality is of a town requesting you to remove a TM or ® from a logo/logotype of a sign? Wouldn't the federal nature of that mark supersede the towns authority? According to federal law your mark would not be represented as protected and you could potentially lose the ability to claim damages for infringement as well. Does my being forced to remove this make me complicit in breaching federal statute?
§

29 (15 U.S.C. §
1111). Notice of registration; display

with mark; recovery of profits and
damages in infringement suit
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 w
ith 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

 

[Marlene]

they also can't deny the colors of a logo as long as it is registered but some towns do that too. why do they want the marks removed?

 

[SignProPlus-Chip]

they also can't deny the colors of a logo as long as it is registered but some towns do that too. why do they want the marks removed?

Actually since the circuit courts are split on the decision of color, they CAN make you alter color unless they are within the jurisdiction of the circuit court that says otherwise.

They think the marks are icky and unsightly.....LOL

 

[Gino]

While they aren't necessary for signs, truck lettering or almost any other form of advertisement, I still don't think they can make it mandatory they be removed.

Icky..... what a bunch of jerks. Tell them to find something else to play with.

 

[Marlene]

Actually since the circuit courts are split on the decision of color, they CAN make you alter color unless they are within the jurisdiction of the circuit court that says otherwise.

They think the marks are icky and unsightly.....LOL

the Lanham Act from 1958 protects federally registered names, marks, emblems, slogans and colors and pretty much boils down to a state or city can regulate signs but what they can't do is require any alterations of the name, color, etc.

 

[TXFB.INS]

hand them a piece of vinyl the same color as the background, if they want the TM or ® unseen they can cover them up.

 

[visual800]

Whats the point of it being on there anyway, its not like its going to change the situation of the logo. Its more cluttered trash like INC. or LLC

 

[Stormyj]

First off, there are two arguments here. First, TM. You do not have to register your logo/name or whatever to use "TM". That within itself protects you under common law. So, if the town makes you take it down, the name is no longer protected. Second, ®. Officially registering your logo/name with USPTO protects your logo/name and not having it on the logo, doesn't stop that protection. ® only tells the viewer that it is registered. This is something that the town attorney should look into and clarify that to the town mayor/council. I would definitely challenge this town ordinance.

http://www.uspto.gov/trademarks/basics/register.jsp

 

[Rick]

It's the norm around most cities here is to not allow it.

I think this says it all...
http://www.forbes.com/sites/work-in...n-and-how-do-i-have-to-use-trademark-symbols/

 

[WildWestDesigns]

First off, there are two arguments here. First, TM. You do not have to register your logo/name or whatever to use "TM". That within itself protects you under common law. So, if the town makes you take it down, the name is no longer protected.

To my understanding, not having it on there doesn't in of itself mean that it isn't protected. Harder to claim something, but I do not think it means no longer protected. Although anything other then Registered is going to be harder to claim.

 

[Jwalk]

Oh it's really a subject for lawyers and how much money they want.

 

[Stormyj]

It's the norm around most cities here is to not allow it.

I think this says it all...
http://www.forbes.com/sites/work-in...n-and-how-do-i-have-to-use-trademark-symbols/

This should be a sticky.

 

[Gino]

Most of these posts and information are explaining when and where you can and/or don't have to use the various symbols. I thought the question was....... does the municipality have the authority to tell someone NOT to use it because it's icky looking..... or for any reason ??

If you want to use it and display it..... who are the city commissioners to tell you to take it off ?? F them !!

 

[ol'phart]

Let them do the work

Ask the municipality to show you the city, county, state or federal documentation that allows them the authority to require this. If they can't then don't worry about it. I would however make the request in writing.
Good Luck

 

[Marlene]

Most of these posts and information are explaining when and where you can and/or don't have to use the various symbols. I thought the question was....... does the municipality have the authority to tell someone NOT to use it because it's icky looking..... or for any reason ??

If you want to use it and display it..... who are the city commissioners to tell you to take it off ?? F them !!

the Lanham act prohibits any state, federal or local municipality from altering a registered logo in any way. they can regulate signs, size lighted or not etc. but not the logo, colors or any slogans that are registered. since the mark proves that it is registered it seems like it would fall under this law. with all that aside, the marks are really small so they are just being prigs about this and once agin, sounds like little people who want to push their power.

 

[Rick]

I asked someone more knowledgable than me...

Since all logos have some level of copyright protection, does that mean every sign has to have ©, ®, ™, SM?
If every sign had a mark, and they are technically not required to have them to protect their logo, then why allow them?

The idea that the Federal law supersedes a city or state is not entirely correct. (ADA is one of those codes)
It's usually the more stringent that supersedes the other. It's interpretive on what's more stringent here but since it's part of the municipal code. The choices are, change the code through due process, or violate it and take your (or clients) chances.

If a client insists, you find out what the code is.
Find out what the fine would be if it's not allowed.
Offer an alternative of a removable mark in case they are popped.
Have them sign off that you not not liable for any of the fines.
If you are required to have a contractors license while doing it.... you might have them put it up if the city/state sanctions you for purposely installing something that violated the building code. It may be that no amount of liability sign off can protect you if you are the one who installed it.

I have had issues with clients being asked to remove a mark after a city warning. They were not fined. It may not be a big deal - but you still have to watch out for your clients arse (and yours)

 

[signguy 55]

I see you're in Bluffton, SC, so I'm assuming you're describing Hilton Head. They made Red Roof Inn Motel paint their roof green about 15 years ago. They have bragged on having some of the harshest sign codes in the country and proud of it. Parking a lettered vehicle in a parking lot, such as for a company furniture store, requires a permit and is usually not allowed. I feel for you. i have friends that will never do sign work in that town, no matter what the job just because of the aggravation.

 

[Pat Whatley]

the Lanham Act from 1958 protects federally registered names, marks, emblems, slogans and colors and pretty much boils down to a state or city can regulate signs but what they can't do is require any alterations of the name, color, etc.

Right, they can't require you to change colors....they can tell you that if your logo doesn't conform to their color standards then your logo isn't allowable on your sign.