Trademark symbols can be confusing, but don’t let all of these symbols intimidate you. Here are four things you should know that will help you use trademark symbols correctly in order to protect your brand and business.
1. What the Trademark Symbols Are
There are three commonly used trademark symbols: TM, SM, and ®.
The “TM” symbol stands for “trademark” and is used for unregistered marks that represent goods like NIKE for sports apparel.
The “SM” symbol stands for “service mark” and is used for unregistered marks that represent services like FEDEX for shipping services.
The registration symbol, the letter R in a circle or ®, stands for “registered mark” and is used for marks (all marks whether trademarks, service marks, design marks, and so forth) that have been registered in the U.S. Patent and Trademark Office (“USPTO”). Alternatives to the encircled R are the words “Registered in the United States Patent and Trademark Office” or the short form “Reg. U.S. Pat. & Tm. Off.”
2. When to Use Trademark Symbols
TM and SM
There is no legal requirement to use the TM and SM symbols and their use carries no legal significance. However, proper use is helpful by putting the public on notice that the owner of the mark is claiming trademark, or branding, rights in that particular mark. This helps to prevent others from unwittingly adopting the same or similar mark for the same or similar products or services, resulting in confusion in the marketplace.
The TM or SM symbol should be used next to unregistered marks (this includes marks that are the subject of still-pending applications) each time they appear on products, product packaging, advertising, and promotional material, among others.
When the mark appears in a writing such as an article, press release, advertisement, and the like, at least the first instance – or most prominent display — of the mark in the piece should bear the TM or SM symbol. To avoid the risk of visual clutter by including too many symbols, discretion should be used in determining how many times to use the markings in a single piece.
As a rule of thumb, over-marking is preferred to under-marking.
The Encircled R
The registration symbol is reserved for marks that have been formally registered in the USPTO. It may only be used in connection with federally registered marks and only for the goods and/or services listed in the registration (this does not include marks in pending applications or marks registered at the state level).
Unlike the TM or SM symbols, use of the registration symbol is regulated by federal law, see 15 U.S.C. § 1111. Hence, it’s important to know the rules and avoid improper use. Deliberate misuse that is intended to mislead others into believing a mark is registered constitutes fraud and is actionable as a civil offense. Innocent misuse arising from a misunderstanding of the rules is not considered fraud, but should be rectified as quickly as possible once the improper use has been identified.
Common occurrences of non-fraudulent misuse of the registration symbol include:
- Use with the mark but for goods and/or services not included in the registration;
- A printer’s inadvertent mistake;
- Use with a version of the mark that is different than the mark as it was registered; and
- Continued use after expiration or cancellation of the registration.
3. How to Use Trademark Symbols
Any of the symbols typically appear in the upper right hand corner of the mark in superscript. If such a placement is impractical or aesthetically displeasing, the proper symbol should appear at the bottom right hand corner of the mark, or as close to it as possible. A symbol should not appear above, below, or to the left of a mark.
If you own a federal registration for a mark registered in standard character format that is without reference or claim to any particular font, stylization, size, or color, and without an accompanying design element, you may use the registration symbol with the mark in any presentation. Note, however, that this this does not create legal rights in or extend protection to the font, stylization, size, color, and/or design component and would not immunize you against an infringement claim regarding these non-character elements.
If you own a federal registration for a mark registered in a stylized or design format, you may use the registration symbol with the mark as it appears in the registration. Since the stylization and/or design elements are legally protected by the registration, you may not use the registration symbol when the mark is presented with different stylization and/or design components.
4. Why Use Trademark Symbols
Demarcation serves the public interest and helps to restrict infringing uses of others’ marks and in the case of registered marks, provides “constructive” notice of a claim of trademark rights. Moreover, failure to provide notice of a claim of rights by using the proper trademark symbol can be very detrimental to a mark owner in an enforcement proceeding.
The trademark law provides that federal registration of a mark on the principal register in the USPTO provides “constructive” notice of the registrant’s claim of ownership, see 15 U.S.C. § 1072.
Note: Constructive notice is a type of notice imputed by law whereas actual notice is notice by factual knowledge of something. Constructive notice is charged in instances where a reasonably prudent person should know or should have known about something even if he/she does not have actual notice of that something.
But, if the owner fails to use the registration symbol with the mark, he/she is precluded from recovering lost profits or money damages in an infringement suit unless the defendant had actual (not “constructive”) notice of the registration. This small detail may have an immeasurably large impact in an enforcement proceeding and should not be overlooked!