It is usually a good indication to me that a topic should be covered when I receive the same question several times in a row and within a short period of time. The question most recently focuses on trademark law. How do you let the world know you have a valid trademark? Why do some people use the ® and some use TM and even some use SM? Which should I use for my trademark? All good questions.
I think what leads to marketplace confusion is that newer or start-up companies routinely want to receive some sort of intellectual property protection. I can totally get on board with the idea! They want protection, but they do not know how. They do not want to hire an intellectual property, or they do not know of one, so they decide to use something they see everywhere – a ® or a TM. From talking with people, I think the thought process is that those tiny insignias must do something because big companies like Coca-Cola, Disney and Target use them. Let’s clear up the confusion.
The first thing you need to know is that using the tiny insignia, whether it be the ®, TM or SM, with your logo/name/brand does nothing to give you trademark protection. You must actually take steps to register your mark. Simply tacking on a tiny symbol to your logo/name/brand is pointless without the legal backing to shore up your act. Because of the globalization of business, I always advocate for people to seek registration on the federal register, if possible. Another option would be to register in the home state where you plan to conduct business, if the state allows trademark protection. You can read more of my thoughts on federal versus state trademark registration by going HERE.
The second thing you need to know is the ® symbol can only be legally used once registered in the country of origin. In the United States it would mean obtaining a federal registration with The United States Patent and Trademark Office (USPTO). Therefore, to use the ® without a federal registration in hand is all kinds of wrong. The biggest risk is by placing the ® symbol without first registering the trademark could be perceived as a federal crime, especially if your intent is to commit fraud by deceiving or misleading the public. Federal crimes equal lots of money and maybe even jail time.
Section 906 of the Trademark Manual at the USPTO states, in sum [emphasis added]:
The owner of a mark registered in the United States Patent and Trademark USPTO may give notice that the mark is registered by displaying with the mark the words “Registered in United States Patent and Trademark Office,” the abbreviation “Reg. U.S. Pat. & Tm. Off.,” or the letter R enclosed within a circle, ®. 15 U.S.C. §1111.
The federal registration symbol may not be used with marks that are not actually registered in the USPTO. Even if an application is pending, the registration symbol may not be used until the mark is registered.
Registration in a state of the United States does not entitle a person to use the federal registration notice. Du-Dad Lure Co. v. Creme Lure Co., 143 USPQ 358 (TTAB 1964).
A party may use terms such as “trademark,” “trademark applied for,” “TM” and “SM” regardless of whether a mark is registered. These are not official or statutory symbols of federal registration.
To read the complete section on federal use of the registration symbol and the possible actions of fraud then visit the USPTO’s site HERE.
Using the ® without a federally registered mark is the equivalent of a fake ID and trying to purchase alcohol while underage. You might have one, you might get away with it, but you really do not have any rights to use the mark and it is illegal to do so. Using the ® is a benefit only those who have taken the time to register their marks with the USPTO can enjoy. The symbol serves to alert the rest of the world the logo/brand/mark is federally registered.
The third thing I want you to know is that you can use TM without registering with the USPTO, but it does not have nearly the authority a properly registered, placed and utilized ® will. A TM used with a logo/brand/mark is mainly used to assert common law rights, to indicate registration in only a local state or jurisdiction, or if you are in the process of registering with USPTO. I also want you to know that just because you can does not necessarily mean that you should. There is no requirement. I find it confusing to everyday people. Finally, visually it might clutter up the overall look of your logo/brand/mark.
The tiny SM is used to indicate a logo/brand/mark linked with a service mark. Get it – “S” as in the word service and “M” as in the word mark. A service mark is a mark linked to a service separate from the sale of goods. Some examples might be a band name, a doctor office group or a law office group. They are performing a service under an overarching name.
The biggest take away I want you to have is this – you cannot and should not use the ® until you have in hand the document showing registration with the USPTO. To do so is fraudulent and misleading to the public. The other thing I would like for you to do is to share this post! You can help prevent confusion in the marketplace by helping to educate those who are wrongly using intellectual property insignia. The symbols matter and proper usage helps to make our overall economy better.
What has been your experience with seeing intellectual property symbols in use? Take part in the Comments section below and Stay Tuned In!
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