Navigating how to use your trademark is as important to understand as when to seek protection for your trademark. Have you ever wondered what the difference is between the TM symbol and the circle R symbol when using your trademark? The differences between the two are important, so please read on.
What is a trademark?
A trademark is a word, symbol, logo or combination of these that differentiate your company’s goods or services from your competitor’s. To learn more about the different types of trademarks eligible for trademark protection, please read our blog post here. Although trademarks with Federal trademark protection enjoy greater benefits and can be more valuable, not all trademarks qualify for Federal protection at the United States Patent and Trademark Office (USPTO). In order to qualify for Federal protection, a trademark owner must be using its mark in interstate commerce (to learn more about interstate commerce, read our blog post here). Some small start-up companies start using their marks before they ever apply for trademark protection at the USPTO. Other regional companies may also have a trademark it would like to protect. How do you let others know that the term or name you have adopted is a trademark? You do that not only by using the term properly as a trademark (read more here), but also by using the proper notification symbol.
What is the TM symbol and when should I use it?
The TM symbol (or SM symbol for service marks) is the proper symbol to use if your trademark is not yet registered with the USPTO and you want to notify third parties (i) that you have already filed your application with the USPTO and you are awaiting the certificate of registration or (ii) you have not filed an application and do not intend to, but you are relying on your common law rights. You may also use this symbol if you have a state registration. The way to use the TM symbol is like this: ACME™ widgets. ACME™ financial services or ACMESM financial services would also be appropriate, although the TM symbol can also be used instead of the SM symbol if you prefer.
What is the circle R symbol and when should I use it?
The circle R symbol can only be used when a certificate of registration has been issued by the UPTO and only in connection with the goods or services listed in your registration. If you use your mark in connection with goods and services not listed in the certificate of registration (for instance as you expand your goods or services), then those items not listed in your registration should be used with the TM symbol. If you use the circle R prior to registration or for an unregistered mark, that is considered fraud. The way to use the circle R symbol is like this: ACME® widgets or ACME® financial services. Failure to use the circle R symbol in connection with your mark after registration from the USPTO can impact a trademark owner’s ability to collect damages in an infringement action so make sure to update all of your marketing communication materials, including your website.
Remember that trademarks are territorial in nature, meaning that just because you might own a trademark in the U.S. does not give you trademark rights in any other country. Although most countries have similar circle R designations, before indicating your mark in other countries, make sure you check with local counsel to ensure your marketing communications are compliant in each jurisdiction where you operate. If you have any questions regarding how to properly use your trademark, how to put others on notice of the marks you own, or if you need any assistance with your trademarks or intellectual property, please feel free to contact us.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a particular focus on trademark prosecution and enforcement. She has protected some the world’s largest brands in more than 150 countries and specializes in helping small and medium sized businesses grow and protect their brands. Contact her at firstname.lastname@example.org.
Stacey is also the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.