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Originally Posted On: https://www.cohnlg.com/trademark-symbols-r-tm-sm-a-complete-guide/

 

THE TRADEMARK SYMBOLS

Principally, there are three symbols that are most commonly associated with signifying trademark rights: Circle R (®), TM, and SM. Depending on the nature of the goods/services sold and the status of the trademark application with the USPTO, one or more of these marks may be appropriate.

A trademark is a branding asset which is anchored to a good/service; namely, a company name, logo, or slogan. Logos, in particular, are powerful trademarks and are typically artistic illustrations that are presented in either color or black/white form. If a trademark applicant is interested in protecting the proprietary color scheme of the logo, the application must reflect the designated colors.

WHAT IS A TRADEMARK?

Remember, a trademark is a branding tool that when attached to a good or service, identifies the source-company, which sells the good or service. Common trademarks include names, logos, phrases and even sounds. However, if the prospective trademark is not actually used in conjunction with a sale, these clever branding items are not bona fide trademarks and are not subject to trademark protection. Moreover, in order for a mark to qualify as a protectable trademark, bona-fide sales of the good/service must be sold in interstate-commerce. So, to satisfy these criteria, an applicant who lives in the State of New York must sell a substantial amount of his/her product to a consumer in a different state (ex. California).

TRADEMARK SYMBOLS: CHOOSE CAREFULLY

TM: The TM stands for Trademark and may be used when the prospective mark is tethered to a good (books, clothing, rugs etc.). An individual need not actually have a registered trademark with the USPTO in order to put the TM symbol adjacent to the mark itself. Indeed, the TM makes absolutely no claim to the registration status of the mark with the USPTO but still serves the important purpose of notifying competitors that the mark is at least used in consideration with the desired goods. Critically, use of the TM does not by any stretch of the imagination confer trademark rights and cannot guarantee that the mark will be protected under trademark law.

SM: The SM stands for Service Mark and may be used when the prospective mark is tethered to a service (accounting, bookkeeping, legal services, personal training services etc.), rather than a good (clothing). Similar to the TM symbol, an individual need not actually have a registered trademark with the USPTO in order to put the SM symbol adjacent to the mark and yet the SM still carries the very important symbolic meaning of, Use-in Commerce, with the designated service. The SM symbol is rather idiosyncratic to the United States, which favors distinguishing SM from a TM. In most other countries, the TM covers both goods and services, rendering the SM symbol rather redundant. Critically, use of the SM does not by any stretch of the imagination confer trademark rights and cannot guarantee that the mark will be protected under trademark law.

®: The Circle R symbol is perhaps the most well known and certainly the most coveted and can only be used upon receiving an official trademark registration from the USPTO. Indeed, if the applicant were to apply for a trademark with the USPTO and begin using the Circle R symbol before obtaining a registration number, the applicant would be in violation of federal law and will likely have his trademark application rejected. Thus, this trademark symbol serves the essential purpose of providing constructive notice of the legal ownership of the mark .The aesthetics of the Circle mark, like the TM and SM, is important to note and typographically, drafted as a small superscript sign.

WHERE SHOULD I PLACE MY TRADEMARK SYMBOLS?

Typically, and in fact nearly always, the trademark symbol (irrespective of whether or not it is a TM, SM or ®) is placed on the top right corner of the mark. In the event that the applicant chooses to use regular sized typography for the symbol, it is entirely acceptable for the trademark symbol to be placed immediately next to the end of the trademark.

HOW TO TYPE A TRADEMARK SYMBOL

Trademark symbols are typically drafted in Superscript which of course means that the symbols will appear smaller and in slightly different font. In order to generate the trademark symbol on an iphone, the applicant need only enter “tm” and hit enter – the user interface will automatically generate the registered trademark symbol ®. On an Mac computer, simply hold down the “Option” key while also hitting the R letter and the registered trademark symbol ® will automatically appear.

SHOULD I INCLUDE THE TRADEMARK SYMBOL IN MY TRADEMARK APPLICATION?

NO! Unfortunately, this is a common mistake trademark applicants make. The TM, SM and ® are unregistrable components of a trademark and will undoubtedly result in a trademark office action. Even worse, if the trademark application includes the ® in the application, the applicant will have violated federal law and the trademark application will be denied. How does this process occur? Upon receipt of the trademark application for review, the examining attorney will consider each submitted specimen very carefully and if the federal registration symbol is used with the mark or with any portion of the mark, the examining attorney will consult USPTO records to determine the existence of the registered portion of the mark and thus, the acceptability of the symbols use. If the examining attorney cannot locate a USPTO record, which justifies the use of the registered trademark symbol, the application will receive an office action. TMEP 906.03

TRADEMARK SYMBOL AND FRAUDLANT USE OF THE ®

To underscore the importance of only using the Trademark Symbol that is appropriate for one’s mark, consider TMEP 906.04.

“Improper use of the federal registration symbol, ®, that is deliberate and intends to deceive or mislead the public or the USPTO is fraud.   See Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Wells Fargo & Co. v. Lundeen & Assocs., 20 USPQ2d 1156 (TTAB 1991) .”

This is a very serious matter.

In the event that the examining attorney even suspects that fraud has occurred in the filing of the trademark application, he must

 

1. Report the matter to the attention of the managing attorney
2. In the event that the managing attorney agrees that fraud may have been committed upon the USPTO, the managing attorney will alert the Administrator for Trademark Policy and Procedure
3. In the event that the Administrator thinks that further action is merited, the Administrator will suggest an appropriate course of action to the Commissioner for Trademarks. TMEP 720.

And on and on it goes. DO NOT commit Fraud with the ® TRADEMARK SYMBOL.

FOREIGN COUNTRIES THAT USE THE ® TRADEMARK SYMBOL

While the United States is arguably the most commonly associated country that uses the ® Trademark Symbol, other countries throughout the world also rely on this powerful symbol to alert competitors of proprietary trademark rights and designate, registration. In the event that a foreign applicant has made use of the symbol on the specimens submitted to the USPTO based on a registration in a foreign country, such use of the trademark symbol is deemed appropriate.

The following foreign countries also use the ® Trademark Symbol:

 

Belgium

China (People’s Republic)

Costa Rica

Denmark

Ecuador

Germany

Guatemala

Hungary

Luxembourg

Netherlands

Nicaragua

Poland

Sweden

I HAVE A ® TRADEMARK SYMBOL AND SOMEONE IS USING MY MARK : WHAT CAN I DO ABOUT IT?

Trademark infringement occurs when a competitor has used a sufficiently similar trademark in conjunction with the sale of a sufficiently similar set of goods/services. For example, if a new technology company were to start selling phones under the trademark “ALPPLE”, this company would be infringing on the Apple company’s trademark rights to its mark, APPLE. In this case, the Apple company would send a trademark cease and desist letter to ALPPLE and very likely commence legal action against the infringer.

Speak with a Trademark Attorney

Registering your trademark correctly from the start is important. Please feel free to reach out and request to speak with one of our trademark attorneys to discuss your idea. We’re here to help.

 

Have a question? We want to know. Contact a Trademark Lawyer today.