On Your Mark—"TM" or "®"? Trademark Notice Guidelines

​When starting a new business or developing a new brand, business owners tend to have common trademark-related questions: Do I need a trademark registration?  What rights will a registration provide?  What are the associated costs and steps?

These preliminary questions are important and start a business down the path toward securing its trademark rights.  However, after a registration is secured there are other relevant issues to address.  In addition to understanding enforcement rights, the importance of proper usage, and what maintenance filings will be due, the educated trademark owner should understand the proper use of notice symbols.

The laws governing use of notice symbols (or “marking”) and the consequences for improper use vary by jurisdiction.  Consequences for improper usage range from claims of false advertising to fines and other criminal penalties.  In order to reap the benefits of proper marking and avoid penalties for inadvertent misuse, brand owners should consider the following:

The Difference Between the "TM" and the "®" Symbols

In the United States, the general rule is the “TM” (and/or “SM”) notice symbols may be used next to a mark at any time (before or after registration) that the mark is used in connection with a good or service.  Using “TM” puts the public on notice that you are claiming rights in the mark and attempts to dissuade others from adopting the same or similar marks for the same or similar goods or services. 

Once a U.S. federal registration is issued, the ® notice symbol may then be used (but only in connection with the goods or services covered by the registration and only so long as the registration is valid).  While use of the ® symbol is not required, it is important and provides significant benefits.  In the event that a registrant files a trademark infringement suit against an infringing party, use of the ® symbol can be evidence to prove the infringer had constructive knowledge of the registration, thereby allowing the plaintiff to recover lost profits and monetary damages. 

Thus, once a mark is granted federal registration, the brand owner should perform a cost/benefit analysis: does the benefit of potentially receiving lost profits and monetary damages outweigh the cost of repackaging and updating advertising materials to include the symbol?  The answer is generally "yes," however the updating of materials can be done progressively as materials are depleted and re-ordered.

Potential Risks of Misusing the ® Symbol

What happens to a brand owner who jumps the gun and uses the ® before a mark is registered?  Use of the ® with an unregistered mark or for unregistered goods/services can give rise to a claim of false advertising.  However, the greater risk is that an infringer could raise the misuse as a basis for an equitable defense in response to an infringement claim.  Further, if the misuse is clearly intended to deceive consumers or competitors, the United States Patent and Trademark Office can rely upon the misuse as a basis for rejecting the application.  Brand owners should familiarize themselves with U. S. marking guidelines to avoid these problems.

Foreign Marking Rules and Guidelines

Foreign laws governing use of trademark notice symbols vary by country, with respect to both the benefits of use and the penalties for misuse.  Understanding the specific jurisdictional guidelines is an important step before a brand owner expands globally. 

Most significantly, it is key to remember that if a U.S. registration is granted, then the product packaging may legally display the ® mark—for distribution in the U.S. only.  If the product is then sold in a foreign jurisdiction, the brand owner must conform marking to the requirements of local trademark law. 

Ideally, marking should be in the local language and easily recognized by the consuming public in the foreign jurisdiction.  Following local guidelines is especially important, as improper or misleading marking in foreign jurisdictions may lead to claims of unfair competition, fines, imprisonment, or other liability.  Examples of countries where misleading marking is considered a criminal offense include Germany, Saudi Arabia, India, Japan, and South Korea. 

In addition, footnotes may be required in connection with standard marking, for example, when more than one mark is displayed, when a licensee uses the mark on their own packaging, or when a distributor’s name is also included on the packaging or other materials.

Conclusion

Trademark notice requirements are often overwhelming to brand owners, especially when foreign distribution is involved.  Proper understanding and adherence to guidelines will help brand owners maximize the benefit of their trademark registrations and avoid mishaps down the road.

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© 2017 Ward and Smith, P.A. For further information regarding the issues described above, please contact Anna B. Miller.

This article is not intended to give, and should not be relied upon for, legal advice in any particular circumstance or fact situation. No action should be taken in reliance upon the information contained in this article without obtaining the advice of an attorney.

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