Everyone is familiar with trademarks—those logos, slogans, and brand names we come across every day— but not everyone knows the difference between the TM symbol and the ® symbol.
If you haven’t noticed it before, a very small “TM” in bold, UPPERCASE or a small r-in-a-circle symbol (“®”) appears in superscript, most often in the upper right hand corner of a trademark.
If you claim rights to use a trademark, applying the correct symbol designation serves to notify your competitors of the type of trademark rights you have in your mark. In the event that you sue someone who is using your trademark without your permission, failure to provide proper notice of your trademark in this way may result in your inability to obtain money damages or recover your court costs.
So, which symbol should you use with your trademark, and when?
Trademarks and Registration on the Principal or Supplemental Register
First, a quick introduction to trademarks. The U.S. Patent and Trademark Office (USPTO) defines a trademark as “a word, phrase, symbol or design, or combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.” If the mark distinguishes the source of a service rather than goods, it is called a “service mark”. The term “trademark” is often used to refer to both trademarks and service marks.
Federal registration of a trademark confers several benefits, which the USPTO lists as including:
• Public notice of your claim of ownership of the mark;
• A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
• The ability to bring a lawsuit concerning the mark in federal court;
• The use of the U.S. registration as a basis to obtain registration in foreign countries;
• The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
• The right to use the federal registration symbol ®; and
• Listing in the USPTO’s online databases.
Trademarks can be registered on two sections of the Federal Trademark Register: the Principal Register or the Supplemental Register. A mark registered on the Principal Register is presumed valid and therefore, “fully protected.” As a result, in the event of a trademark dispute, the burden is on the opposing party to prove that the mark is invalid. Most marks are registered on the Principal Register; it is the Principal Register that grants the benefits described above to registered marks.
The Supplemental Register is reserved for trademarks that are descriptive in nature and capable of acquiring distinctiveness. For example, TASTY TREATS would be a descriptive name for cookies. The USPTO generally does not allow descriptive marks to be registered on the Principal Register because this would prohibit others from using these words to describe their goods and services. For this reason, the USPTO will only allow descriptive names to be registered on the Principal Register if they have acquired “secondary meaning.” A trademark acquires secondary meaning when consumers come to identify an association between it and specific goods and services.
Because of this, marks that are descriptive but capable of acquiring distinctiveness (i.e., secondary meaning), but have not yet done so can be registered in the meantime on the Supplemental Register. The main advantage of the Supplemental Register is that no one will be able to register a confusingly similar mark on either the Principal Register or the Supplemental Register. However, because a mark on the Supplemental Register is presumed to still be descriptive, in the event of a trademark dispute, the owner must show that the mark has acquired secondary meaning.
When can I use the TM symbol?
No trademark registration is necessary to use the TM (trademark) or SM (service mark) symbols. While you may use these symbols to alert the public to your claim of a common law mark, it is important to note that common law does not give you all the rights and benefits of federal registration. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application. Though the SM symbol designation may be used for your service mark, the TM symbol functions identically and is used much more prevalently.
When can I use the ® symbol?
Federal registration with the USPTO is necessary in order to use the federal registration symbol “®”. This means both registration on the Principal and on the Supplemental Register.
The USPTO lays out three important restrictions on the use of the “®” symbol:
(1) it may only be used after the mark is registered (you may not use it during the application process);
(2) it may only be used on or in connection with the goods and services listed in the federal registration; and
(3) it may only be used while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires).
For more information on trademarks generally, and how to register your trademark with the USPTO, visit their website at www.uspto.gov. You should consult with an attorney if you have questions about how to register or enforce your trademark against others.
Lizbeth Hasse
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