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United States
In the United States, it is proper to use the registration symbol ® only to give notice that a trademark has been federally registered in the United States Patent and Trademark Office.
The proper form of registration notice is the letter 'R' in a circle ® placed in immediate conjunction with the registered mark. Alternative forms of registration notice, which may appear as a footnote with an asterisk placed next to the registered mark, are 'Registered in the U.S. Patent and Trademark Office,' 'Registered in U.S. Patent Office,' 'Reg. U.S. Pat & Tm. Off.' or 'Reg. U.S. Pat. Off.'
A registration symbol is optional. But if it is used, the registrant can get an award of damages or profits for past infringement without having to prove that the infringer had actual notice of the registration.
There are some practical advantages to the use of a registration notice.
The proper form of registration notice is the letter 'R' in a circle ® placed in immediate conjunction with the registered mark. Alternative forms of registration notice, which may appear as a footnote with an asterisk placed next to the registered mark, are 'Registered in the U.S. Patent and Trademark Office,' 'Registered in U.S. Patent Office,' 'Reg. U.S. Pat & Tm. Off.' or 'Reg. U.S. Pat. Off.'
A registration symbol is optional. But if it is used, the registrant can get an award of damages or profits for past infringement without having to prove that the infringer had actual notice of the registration.
There are some practical advantages to the use of a registration notice.
It shows that the term is being used as a trademark, not merely as a descriptive or generic term.
Use of a trademark symbol in the first prominent mention of a trademark (e.g., in a heading) is more important than repeated use throughout a brochure or web page. The symbol does not have to be used every time the mark is used. Instead, use the symbol in the first instance the mark is used, in the most prominent use of the mark, or both. My trademark is registered in China (or any country abroad), can I use the ® in the US? No, don’t do this! Trademarks are territorial, a registered mark in China does not grant you right to use the R symbol in the USA. That’s may be considered a false trademark claim. Can the ® symbol be a part of my trademark when I apply for it? These are the symbols you should use, you know before you file a trademark application or during the application process. TM stands for trademark. A trademark is a mark that represents goods, like clothing or sunglasses. SM stands for service mark.
It may inhibit a widely misused mark from becoming generic.
It may deter potential infringers.
On the other hand, if you intentionally use a registration notice improperly, you may lose the right to register the mark in the U.S. Patent and Trademark Office, and may even lose the right to get an injunction against an infringer.
There are four principal types of improper use:
First, with a word or device that has not been registered as a trademark in the Patent and Trademark Office.
Second, in a location that could apply to unregistered as well as registered marks.
Third, in connection with goods for which the mark has not been registered.
Fourth, in a form of display different from the registered form of display. However, If the mark was registered in block letters, the registration is considered to cover the mark regardless of its form of display.
Both the Patent and Trademark Office and the courts regularly excuse 'honest mistakes.'
For unregistered marks, including while you have a pending trademark application that has not yet become a registration, you may also obtain the practical advantages offered by a registration notice by using informal trademark notices, such as 'TM' (meaning trademark) or 'SM' (meaning service mark), or you can use an asterisk with a footnote such as 'Trademark of XYZ Company.'
The formal or informal notice does not have to appear everywhere; it is sufficient to use it with the first or most prominent mention of the mark in each item on which it appears.
For unregistered marks, including while you have a pending trademark application that has not yet become a registration, you may also obtain the practical advantages offered by a registration notice by using informal trademark notices, such as 'TM' (meaning trademark) or 'SM' (meaning service mark), or you can use an asterisk with a footnote such as 'Trademark of XYZ Company.'
The formal or informal notice does not have to appear everywhere; it is sufficient to use it with the first or most prominent mention of the mark in each item on which it appears.
International
The symbol ® has been officially recognized as a proper trademark registration notice by many other countries, but not all of them. When you are preparing labeling for products sold any other country, or when your mark will appear on a website from which purchases can be made by customers in any other country, it is desirable to review the local marking requirements.
False or misleading use of the ® symbol can result in unfair competition claims in some countries such as Germany. In fact, falsely indicating that a trademark is registered can be a criminal offence, with possible fines and/or imprisonment, in countries such as Brunei, India, Japan, Korea and the United Kingdom.
On the other hand, it may be necessary to use the appropriate local registration notice (or some other ownership indication in the local language) when your mark is used by a licensee or distributor whose name appears on the product or labeling, or when your mark appears with marks owned by others. Making your trademark rights known by use of a registration notice or some other means also may be necessary to get remedies against an infringer or counterfeiter in some countries such as Mexico.
Some internationally distributed materials use a footnote legend such as 'Trademark XYZ ® in the USA and in other countries.'
False or misleading use of the ® symbol can result in unfair competition claims in some countries such as Germany. In fact, falsely indicating that a trademark is registered can be a criminal offence, with possible fines and/or imprisonment, in countries such as Brunei, India, Japan, Korea and the United Kingdom.
On the other hand, it may be necessary to use the appropriate local registration notice (or some other ownership indication in the local language) when your mark is used by a licensee or distributor whose name appears on the product or labeling, or when your mark appears with marks owned by others. Making your trademark rights known by use of a registration notice or some other means also may be necessary to get remedies against an infringer or counterfeiter in some countries such as Mexico.
Some internationally distributed materials use a footnote legend such as 'Trademark XYZ ® in the USA and in other countries.'
For further information about trademarks, please contact William M. Borchard.
This ON MY MIND™ Blog post © 2014 by Cowan, Liebowitz & Latman, P.C., New York, NY.
Suggest topics for future Blog posts to [email protected].
In the world of commerce, the ® registered trademark symbol (known as the “Circle R”) conveys a very important meaning. The registered trademark symbol signifies that a trademark or service mark has been federally registered with the United States Patent and Trademark Office (USPTO). It’s regularly used by owners of registered trademarks to put the world on actual notice of their federal trademark rights and to deter others who may be considering adopting an identical or confusingly similar mark.
As a side note, just because you see the registered trademark symbol next to a trademark, don’t assume that the mark is actually federally registered. It’s very possible that the registration may have been cancelled, the mark was never registered to begin with, or the mark is merely the subject of a pending trademark application that has not yet matured into a registration. So, if you ever want to know for sure whether a particular trademark is registered, you’ll have to conduct a thorough and comprehensive federal trademark search.
® vs. TM / SM
The registered trademark symbol shouldn’t be used with a particular trademark until the USPTO officially issues the Certificate of Registration. Instead, the “TM” or “SM” trademark symbol may be used to alert the public to a claim of ownership in the mark. Once the mark is registered by the USPTO, the registered trademark symbol can be substituted in place of the “TM” or “SM.”
Proper Placement of the Registered Trademark Symbol
It’s recommended that the registered trademark symbol be used in connection with all registered trademarks. It should either be placed to the lower right (subscript) or to the upper right (superscript) of the actual mark. The COCA-COLA example below illustrates a subscript placement. The CITIBANK example below illustrates a superscript placement.
Proper Use of the Registered Trademark Symbol
It’s important to note that the Circle R can only be used with a registered trademark when the mark is being used to advertise and sell the products/services recited in the Certificate of Registration. For instance, let’s say that a company obtains a federal trademark registration for XYZ for “t-shirts.” But, let’s say the company also sells hats and backpacks under the same XYZ trademark. This company may use the registered trademark symbol when the XYZ mark is being used to advertise and sell t-shirts (e.g. XYZ®), but not when the XYZ mark is being used to advertise and sell hats and backpacks. Instead, the company may use the “TM” for hats and backpacks (e.g. XYZ™). If the company later applies to register XYZ for hats and backpacks and is eventually granted a registration, then it can replace the “TM” with the registered trademark symbol.
Use Of The Registered Trademark Symbol
Why Should I Use the Circle R?
Registered Trademark Symbol Tm
Once the USPTO issues the Certificate of Registration, the trademark owner should use the Circle R in conjunction with its mark. Even though use of the symbol is optional, a registered trademark owner who fails to use it is barred from recovering profits and damages in a trademark infringement lawsuit unless the infringer had actual notice of the trademark registration (which may be quite difficult to prove in many cases). The owner of the registered trademark may still be able to stop the infringing party from continuing to use the mark, but monetary compensation could become much tougher to get.
Small Registered Trademark Symbol
Do You Want the Ability to Use the Registered Trademark Symbol?
Only by registering your trademark with the USPTO will you obtain the maximum protection under the law and the right to use the registered trademark symbol to notify and deter your competitors.
I’m experienced US trademark attorney Morris Turek. If you have any questions about trademarks in general, or if you’re ready to safeguard your trademark by obtaining a United States trademark registration, please feel free to contact me for a no-obligation consultation. I may be reached at (314) 749-4059, via email at [email protected], or by filling out the contact form located below. As an experienced and dedicated trademark attorney, I’ll provide the assistance and guidance you need to protect your most valuable assets…your trademarks.