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When the symbols ® and ™ should and should not be used
Posted in Trademarks

What is the difference between the trademark symbols ® and ™?

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.

It shows that the term is being used as a trademark, not merely as a descriptive or generic term.

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.

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."

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 law@cll.com.

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