The How and Why of Trademark Symbols

On Behalf of | Feb 19, 2020 | Firm News

by Valerie Brennan

Trademark symbols or notices – TM, SM and ® – serve important purposes but it’s not always clear why and how companies should use them.  Here’s a concise guide:

Which?  Use TM for unregistered product marks, SM for unregistered service marks (but TM is ok too), and ® for federally registered marks when used for whatever products or services are covered by the registration.  Keep using TM / SM after an application for federal registration is filed (until the registration issues, after which, switch to ®).  The ® is appropriate regardless of whether the registration is on the U.S. Principal or Supplemental Register.

Why? Use of ® creates constructive notice of your rights.  If you have a federal trademark registration but fail to use the ®, an infringer could avoid paying certain damages unless you can show that the infringer had actual knowledge of the registration.  Use of TM / SM shows that you claim rights in a mark and helps develop those rights, but make sure you’ve cleared the mark use first (see USPTOBasicFacts).

When? Aesthetics matter.  You only need to use symbols with the first use of a mark in a piece of content, like in the header or in the first line of text.  After that, additional uses aren’t necessary and become visually distracting.

How?  Typically, the notice goes to the top right of a mark but bottom right is ok with logos if it looks better.  Avoid layering different notices onto a single house + product mark.  It’s better visually to use TM at the end of the combo mark and, assuming it’s registered, use the ® when the house mark is used alone.

Why don’t they? Owners of well-known brands sometimes don’t use trademark notices prominently.  There are various reasons for this choice.  In many cases, they are distributing products and content worldwide and their marks might not be registered everywhere.  Owners of famous marks also might be confident that they will be able to prove that an infringer knew their marks were protected.

What about sounds, etc.?  Not all marks are visual.  Marks can be sounds, scents, store layouts.  These situations are when you use a statement such as: The “flowery musk scent” of our store is a U.S. federally registered trademark of Verizon.