Trademark Symbol Usage – Are You Using the Correct Symbol?

The three trademark symbols are the circled R, and the capital letters TM for trademark and SM for service mark.  All three symbols are generally presented as a superscript.

The circled R symbol (federal registration notice) is reserved for those trademarks and service marks that have been registered by the USPTO as the result of a formal trademark application evaluation process.   Additionally, the circled R should only be used in connection with the goods or services that are listed in the federal registration issued by the USPTO.  For example, if a mark is registered for clothing goods only as evidenced by the federal registration, the federal registration symbol should not be used by the mark owner on any non-clothing goods.  The owner of the “initial” registered marks may apply for registration of the mark for non-clothing goods to obtain broader “registered mark” coverage.

Nor does registration of a mark in one or more of the fifty states of the United States entitle a person to use the federal registration notice.  The circled R is to be used only to denote actual registration of the mark by the USPTO for the goods and services shown in the registration.

The mere submission of a trademark application in no way means that the applicant can start using the registered mark while the application is pending.  Any usage of the circled R absent formal registration of the mark is a violation of federal law and may cause the USPTO to deny registration of the trademark application even if the application is otherwise acceptable.

The USPTO’s refusal to register a mark may have unintended economic consequences for applicants who have spent already considerable funds on developing their brand only to be denied registration of the mark. For example, a registered trademark can be a valuable business asset.   Lack of a formally registered mark may reduce the value of the business or interfere with the franchising process which generally involves the licensing of a federally registered mark(s). Although other factors may result in refusal by the USPTO to register the mark, applicants should also avoid losing out on acquiring registered trademark rights by misusing the circled R symbol.

Until when and if a mark is formally registered with the USPTO, the provider of goods and/or services should use the TM (trademark) or SM (service mark). These are not official or statutory symbols of federal registration.  Nevertheless, both symbols provide notice to would-be infringers that the mark owner views the mark as a trademark/service mark and that it will defend it against would-be infringers. It is entirely acceptable if specimens submitted to the USPTO’s trademark application examining attorney includes either the TM or the SM.

Specimens submitted to the USPTO examining attorney that include the circled R may present problems for the applicant. For applicants not using the services of a trademark attorney, it is therefore cautioned that the applicant ensure that website pages, marketing materials, displays, etc. submitted to the examining attorney as specimens do not show the circled R. An advantage of hiring a trademark attorney to handle trademark applications is that the attorney will:  1) verify that the specimens are suitable for submission by personally evaluating the specimens for compliance with the law prior to submission; 2) alert the applicant of any observed misusage of the federal registration notice in the specimens; 3) request new specimens for submission to the USPTO; and 4) direct the applicant to immediately refrain from using the circled R.   That is, a thorough trademark attorney will do much more than merely fill out a trademark application form.

Besides possible problems with trademark applications, are there any other legal ramifications associated with the usage of the circled R for unregistered marks?  Many times the usage of the circled R is inadvertent and based on a misunderstanding of how and when the circled R can be used.  That is, the misuse is an honest mistake.

However, the misuse of the circled R can also result in allegations of fraud to knowingly and willfully deceive or mislead consumers or others in the trade into believing that the mark was registered.  Where the cause of action is before the Trademark Trial and Appeal Board (TTAB) such as an opposition proceeding, the TTAB may deny registration of an otherwise registrable mark.  Such conduct would also likely sustain a petition to cancel a registered mark with the TTAB.

Where the cause of action is before a federal court in a trademark infringement proceeding, fraud claims may result in invalidation of a registered mark.  Also, the defendant in a trademark infringement lawsuit may have possible false advertising claims against the mark owner who has knowingly misused the circle R symbol and a possible unclean hands defense especially when the plaintiff’s misuse of the circled R symbol is accompanied by a bad faith intent to deceive.

Generally, fraud claims must be alleged with particularity whether the matter is before the TTAB or a federal court.   Fraud claims are not easy to prove because of the requisite intent requirement as it pertains to deceiving of the public.  The Federal Circuit has held that how quickly a trademark owner corrects misuse of the registration symbol after learning of the misuse, will impact the determination of whether the trademark owner is charged with an intention to deceive the public.  Therefore, trademark owners should periodically review the presentation of their marks to the public to ensure that the proper trademark symbol is being used.

Example: A website designer is told that the owner of the website has a trademark or service mark. The website designer, thinking that the mark(s) is registered, uses the circled R when the appropriate symbol was the TM or SM.   The mark owner should ensure that the circled R symbol wherever used on the website is removed and replaced with the appropriate TM or SM symbol until when and if a registered mark is secured.

In conclusion, to avoid any unpleasant legal surprises resulting from the misuse of the circled R symbol, just don’t use this symbol unless the mark is listed as a registered mark according to the public records available at www.uspto.gov.   And then use it only with the mark owner’s goods and services specified for the registered mark.



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