What's That Symbol All About? Protecting Your Trademarks with Proper Notice Symbols

Explore:  Trademarks

Providing proper trademark notice – with a notice symbol signifying that the word or design is a trademark – is a simple and unappreciated method of trademark protection.  Using a proper trademark notice serves a number of purposes:

  1. A trademark notice symbol helps the public to identify the word or design as a trademark.
  2. The trademark symbol provides notice to consumers and competitors that the owner considers the word or design to be a trademark.
  3. Proper use of the trademark symbol on federally registered trademarks preserves an owner’s ability to recover all of its damages during an infringement suit.

Which Symbol is Appropriate?

Generally, there are three categories of marks which may use a notice symbol: unregistered trademarks, unregistered service marks and federally registered marks (which include both trademarks and service marks).  The three marking symbols or abbreviations that correspond to the categories of marks are: TM, SM and ®.

  • The TM abbreviation is used with unregistered trademarks, which are words, slogans or designs used on goods or actual products.
  • The SM abbreviation is used with unregistered service marks, which are words, slogans or designs used in conjunction with services.
  • The ® symbol or any mention of federal registration can only be used with federally-registered trademarks or service marks, and only when the trademark or service mark is used with the particular goods or services listed in the registration.

The ® symbol may be omitted when the phrase “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” is used within close proximity to the mark. These phrases and the ® notice symbol are known as statutory notice and are specified within the Federal Trademark or Lanham Act. 

Besides using the symbols described above, trademark owners can give the international community notice that they own a trademark through alternative methods.  Alternative methods of notice used by trademark owners include giving an infringer a cease and desist letter, a complaint for infringement filed with a court, or an informal oral notice.  Additionally, notice may be found where an infringer has viewed a report in which a mark appears with the ® notice symbol or when an infringer has registered on a trademark owner’s website and registration required acceptance of terms of use that included acknowledgement of the trademark owner’s rights to their mark(s) and an agreement not to display or use the mark(s) in any manner.

Why Should I Use the Notice Symbol?

Use of the notice symbols can affect the types of remedies available for use against infringers. It will also determine the point in time when the calculation of money damages begins and can affect the speed of infringement resolution.

If notice symbols are not used, a trademark owner may be unable to obtain money damages against an infringer.  Money damages are calculated only from the date of actual notice and must be proven in court. Depending upon the circumstances of the infringement, a trademark owner may be able to recover between $1,000 to $2,000,000 per instance of illegal use of a mark by an infringer. 

If trademark owners are vigilant in ensuring that the notice symbol accompanies every instance where the mark is used, damages can be calculated from the date of registration with the USPTO.  If not, a trademark owner may be able to stop any future infringement but will not be able to obtain any monetary damages. 

The overall impact of omitting the ® notice symbol from registered marks is that remedies and damages become much harder to obtain and may only be nominal, if and when the mark is infringed. 

There are less desirable methods of providing notice, such as using a registration statement apart from the mark or inclusion of an intellectual property ownership statement within the Terms of Use of a website.  Examples of the separate registration include:

  • “[Mark] is a registered trademark of the [Company].” or
  • Outside of the U.S., “[Mark] is a trademark of [Company], registered in the U.S. and other countries.” 

While these statements will still provide the actual notice required to obtain money damages against an infringer, they are slightly less effective than the ®.  Therefore, it is in your company’s best interest to use the statutory notice whenever it is practical and feasible.  Consistent use of the ® allows for the quickest resolutions to infringement matters and allows your company to be appropriately compensated by the infringer in the form of monetary damages and disgorgement of the infringer’s profits.

While using TM or ® is not mandatory per se, it is highly recommended to put the world on notice that you own the mark, deter potential infringers, and allow for the greatest speed and latitude in resolving infringement disputes.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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