What to do with those pesky ™ and ® symbols, and when to use them

Ilene Stritzver at CreativePro.com offers handy tips for creative professionals in typesetting the trademark (™) and registered trademark ® symbols. Her article discusses what fonts to use, how to place the trademark symbols, what sizes should be used, and how to adjust the fonts for ugly trademark indicators.

Ms. Stritzvers example of a registration symbol too big, just right, and too small

Ms. Stritzver's example of a registration symbol too big, just right, and too small

But in addition to placement of the symbols, here’s a quick primer on their use and application, if you’re new to the trademark world.

Many creative professionals–and even many attorneys–do not know the difference between the ™ and the ® symbols, or when they should be used.

In the United States, the ™ symbol is used in connection with trademarks that have not been registered with the U.S. Patent & Trademark Office. It can mean that an application is on file, or it can mean that, even though no registration has been sought, the trademark owner claims “common law” or state trademark rights.  Adding the ™ notice is very important, because it is the only way to communicate to the public and to competitors that you’re claiming this word as a trademark. Should a competitor come along later and use a similar trademark on similar goods and services, and you try to make them stop, it is easier for them to argue that (a) they believed you were not using the term “in a trademark sense” but were using it “descriptively” or just as part of plain language, or (b) that, at a minimum, they were not “willfully infringing” on your trademark (which gives the mark holder additional remedies) because you had not provided the notice to the world that you were claiming exclusive rights to use the mark.

In the U.S., “®” is the designation for trademarks that have been registered with the USPTO. Not with your secretary of state, not with any state trademark authority, not with any third-party “registration service,” but with the federal government.  In the United States, trademark rights are acquired upon use rather than registration; however, there are legal advantages to registering a trademark federally.  These include a presumption of validity, a clear date of first use, and nationwide priority at least as early as the date of registration.  Therefore, there is a (slim) possibility that if a person uses an ® symbol improperly, the rights holder could forfeit some of her rights in the trademark (because the trademark owner falsely asserts federal trademark rights in a mark for which they have not received a federal registration).

Technically, there is one more trademark designation missing — “sm” for “service mark.” A service mark is a mark that is used in connection with services rather than goods. Thus, COCA-COLA for “soft drinks” is a trademark, and COCA-COLA DAY (if it existed) for “charitable fundraising services” would be a service mark.  Section 3 of the Lanham Trademark Act recognizes that service marks are “registrable, in the same manner and with the same effect as are trademarks,” and the law does not otherwise substantially distinguish between a trademark and a service mark.  (There are a few minute differences; for example, the USPTO will accept advertisements as “specimens,” or proof of use of the service mark, whereas it will not accept pure “advertisements” for trademarks.) The ® symbol is applied both to registered tradmarks and service marks, but technically “sm” should be applied to unregistered service marks, while ™ should be applied to unregistered trademarks.  The problem, of course, is that there is no ASCII “sm” character, which means that adding an “sm” character, especially in body text, can be cumersome and annoying.  I am not aware of any case that holds that ™ is improper notice for a service mark, but then again, I’ve not looked for such a case.  In other words, if you’re really nervous about giving notice about a particular tradmark, err on the side of caution and use “sm”.

(Please note that ™, “sm,” and ® refer only to trademarks, and not copyrights or patents.)

A thorough trademark attorney, in house counsel, or even a design professional adding the trademark symbols to logos, should be aware of the differences and might want to confirm the status of any trademark periodically when new logos or publications are designed.

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1 Comment

Filed under Law, Trademarks

One response to “What to do with those pesky ™ and ® symbols, and when to use them

  1. Patrick Owens

    How does one deal with commas and periods that fall after the trademarked name of a product? HTML does not allow for the period or comma to be tucked in neatly beneath the ™ symbol as in WETDUCK™.

    Thank you.

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