NATOLI-LEGAL, LLC
Often there is confusion about when and how to use various trademark symbols and qualifiers. Let me start here with a basic and general reminder. Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the United States Patent and Trademark Office (USPTO). In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another’s intellectual property.
That said, let’s talk about some of these symbols we see employed. The widely recognizable R-in-O or ® symbol is only to be used on those trademarks that are active federally registered trademarks. These trademarks can be registered either on the Principal Register or the Supplemental Register. If your trademark is registered in another foreign jurisdiction then it is generally permitted to use the symbol here in the US as well. There is no legal requirement to use the ® Registered Trademark symbol, but not using it may have negative consequences such as mitigating damages for infringement if the accused party can show that they had no knowledge this was a registered trademark, for example. Or in other words, you might then be required to show that they had actual knowledge of your registration and if you were not using the symbol this can become much harder to do thereby decreasing the kind of damages you might otherwise be entitled to. Use of the symbol presents constructive notice of your federal trademark registration and it should always be used properly.
One mistake we see a lot is when applicants submit USPTO trademark applications and use specimens that show the trademark depicted with the ® symbol already affixed. The USPTO Examining Attorney will not allow a mark to be registered in such a case, so never send in new trademark applications with the ® symbol already inputted next to your branding.
The other two symbols we see, but perhaps less often, are the two common law qualifier symbols namely TM (for goods) and SM (for services). These are essentially notice mechanisms and they have little to no actual legal significance. There is no obligation to use them, but doing so has some benefit. The main reason anyone would go out of their way to use these is to help prevent unwitting trademark infringement before it happens. When you use these qualifiers you are giving notice to the public of your claim of trademark rights in the marks. Should a prospective competitor take notice of this, she would then be much less likely to consider using your trademark or one that might be considered confusingly similar. This has the advantage of stopping headaches before they happen.
How Do I Actually Use These Symbols?
In most cases, you can use a superscript placing the symbol just adjacent to the trademark in the upper right hand corner. There is, however, no exact formula to this and you are free to move the symbol to the lower corner, for example, if this better suited your purpose. In some cases, where both a logo/image mark and literal text elements are both protected it is not uncommon to see a ® symbol next to the literal text elements as well as the full logo.
When you are making reference to your trademarks for example in promotional materials, articles, etc. it is not necessary to use the symbol after each reference. In most cases, you will merely use it upon your first use in the same material so long as that is conspicuous then subsequent references in the same material will not need the symbol placed next to them.
Before you start investing in any trademark you should get some solid legal advice.
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