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Proper Use of the Registered Trademark Symbol

There are legal limitations in most countries that use the registered trademark symbol ® on exactly when the circle R can be used. The countries that use this special trademark symbol include the United States and the following foreign nations:

· Belgium

· China (People’s Republic)

· Costa Rica

· Denmark

· Ecuador

· Germany

· Guatemala

· Hungary 

· Luxembourg

· Netherlands

· Nicaragua

· Poland

· Sweden

As stated in the Trademark Manual of Examining Procedure (TMEP 906), a federal registration symbol should be used only on a registered trademark. In other words, when a trademark application has not been filed or, if an application is filed, but still pending, the registration symbol may not be used until the mark is officially registered after allowance by the Patent and Trademark Office.

Use of ® Limited to Listed Goods or Services

In addition to the required registration, the registered trademark symbol may only be used “on or in connection with the goods or services that are listed in the registration.” Therefore, when you are building your brand and business and expanding into new products and services, you should use the TM or SM symbol until the mark becomes federally registered with your new goods or services listed. You will be required to pay registration fees to the USPTO for each international class of goods and services that you register.

When you do decide to expand, you should also be aware of the possibility that your trademark may not be available to use on some goods or services because of infringement, i.e. the same trademark for use on other products may be owned by someone else. This can be a surprise to some businesses. You do not automatically have the right to use your trademark on different products, especially when those products or services are in a new area of commerce for your business.

Many trademark owners mistakenly use the registered trademark symbol ® when they shouldn’t. Such mistakes should be avoided to prevent deception of the public and legal troubles for fraudulent use of the registration symbol.  One cause of confusion for business owners is registration of a mark within a particular state. This seems like a plausible way to gain registration and then use the registration symbol. However, registration in a state of the United States does not entitle a person to use the federal registration notice, which include the ® symbol. Du-Dad Lure Co. v. Creme Lure Co., 143 USPQ 358 (TTAB 1964).

United States Trademark Law

Use of the ® symbol in the United States is governed by regulations and U.S. law. 15 U.S.C. §1111 sets forth the following:

Notwithstanding the provisions of section 1072 of this title, a registrant of a mark registered in the Patent and Trademark Office, may give notice that his mark is registered by displaying with the mark the words “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the letter R enclosed within a circle, thus ®; and in any suit for infringement under this chapter by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration.

TM and SM Trademark Symbols

The registered trademark symbol ® is only one of the various designation symbols used for trademarks. The ®, TM, and SM symbols are all used to alert the public of your claim to a mark.

Use TM Symbol for Goods (not registered trademark)

When you do not have a federally registered mark, but you do want to protect a trademark to distinguish yourself, then you should use the TM or SM symbols. These symbols are used for common law marks that may be given some legal protection through mere use of the mark to indicate the source of a product or service. Common law trademarks exist without any official registration of the trademark.

In the example of DEERCON below, the mark became registered and may now use the ® symbol. However, until then, the product was marketed using the TM symbol as shown while the trademark application was pending.

Registered trademark symbol TM example

Use SM Symbol for Services (not registered trademark)

When you are selling your services instead of a product, you may use the SM symbol as a way of claiming ownership of your mark. Both the TM and SM symbols give notice to the public, much like the registered trademark symbol discussed above. However, the status provided by the TM and SM symbols make clear that the mark is protected, but not yet registered. Each of these symbols and the way that they are used help indicate the level of protection that a trademark owner has.

The ® indicates a stronger level of protection, an incentive for trademark owners to register a trademark with the PTO. However, as discussed above, the trademark registration symbol may only be used by an owner following registration with a national authority, which is the USPTO in the United States.

Once your trademark is registered, proudly display the ® symbol as a superscript following your mark. This gives notice of your registration with a national government authority. With proper notice and use of the ®, you can maximize your damages from anyone who decides to infringe on your brand name. If for some reason your are not able to use the ® symbol because of limitations with typing, then use the legal equivalent. In the U.S., you can state “Registered in United States Patent and Trademark Office,” or, “Reg. U.S. Pat. & Tm. Off.” to indicate your legal status.

 

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