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Copyright Law

Trademark Symbols and When to Use Them

Trademark Symbols and When to Use Them

Sophi Robbins

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Given their constant presence in our daily lives, the symbols ® and ™ are very familiar to most of us. But what do they actually mean? And as a business owner, how do you know when to use them?

Both symbols refer to U.S. federal protection granted to the logo or phrase. The United States Patent and Trademark Office catalogues all registrations and applications in its database and reviews the database for potentially confusing marks when processing new applications. Registering your mark through their office is the best way to defend your brand from competitors.

What does the ™ symbol mean?

The ™ symbol, when added to a logo or phrase, indicates an unregistered trademark. This could mean that the trademark owner has “common law” rights, established automatically by law simply by using the mark. Or it could mean that they have begun the federal registration process but have not completed it yet. Although there is more protection to be gained by registering with the USPTO, it is still wise to use the TM symbol to communicate the seriousness of your mark, that you consider this to be your intellectual property that others cannot use. Competitors are more likely to avoid infringement when they consider the mark your property.

When to use the ™ symbol?

Use the ™ symbol whenever you use your unregistered mark in public. Common uses are as a  superscript at the end of the word or subtly integrated into the logo. It is often tempting to hide it amidst the design, but it’s important to remember that it should be easily visible since its purpose is to communicate your ownership to competitors.

Two examples for use:

  1. You just started your new business selling Sally’s Seashells. You have not registered your mark, and you aren’t even sure you want to. You can still use Sally’s Seashells™.
  2. You decide that, yes, it’s a good investment to register the mark. You work with an attorney to file an application and learn that it will be several months before it completes the process. You may keep using TM until you achieve registration.

Although it’s rarer, you might have also seen the symbol SM in a similar situation. The use of  SM , standing for service mark, is used the same way as ™ , but exclusively on services. For example, if your company sold seashell cleaning services rather than actual seashells, you could use Sally’s Seashell CleaningSM.

What does ® mean?

The ® symbol refers to registered trademarks only. Do not display this symbol until you have achieved registration with the USPTO. Use without registration can result in the USPTO refusing to register your mark, in which case you’ve lost the protection that the USPTO could afford for your intellectual property.

When to use ®

Use ® whenever you use your registered mark in public. Use the same methods for integrating it into the phrase or logo as you would for ™.

Many companies submit multiple applications on the same mark in order to cover multiple kinds of goods or services. For example, McDonald’s has registrations for both “restaurant services” and “coffee drinks.” It may be important for you to differentiate use of ® if only certain goods or services are registered.

Two examples for use:

  1. Your registration for Sally’s Seashells is complete! You receive a certificate of registration from the USPTO and can now start using Sally’s Seashells® to establish your brand against competitors.
  2. You applied for registration for Sally’s Seashells to sell seashells, and also to sell t-shirts, which you plan to do later on when your fanbase grows. The registration went through for seashells, but it hasn’t yet for t-shirts because you’re not selling them yet. You can use ® on your website, on your seashells, and on advertising. But for your t-shirts, you must continue to use ™ .

Both ™ and ® are optional symbols, and only serve to benefit you by communicating ownership and protection. It can easily become cumbersome to include the symbols in every single instance of a mark, so the general recommendation is to use it in the “first and last” cases. For example, your website may include the symbols at the top of the page in the header, and at the bottom in the footer, but not on any of the references in between. Or in a lengthy document, you can use the symbol on the first page or title but leave it off throughout until you reach the last instance of use. This clearly communicates the protection of the mark without overbearing your materials.

Use of the symbols is a great tool for protecting your intellectual property – using them correctly can save you a headache with the USPTO. Reach out to us if you have any questions, we’re always available to kickstart your IP journey.

ABOUT THE AUTHOR

PARALEGAL & OFFICE ADMINISTRATOR

Sophi has a background in office management and small business management and has had the pleasure of seeing multiple small companies grow with her. Since graduating with a BA in Environmental Studies and Business Marketing, she has worked in both office jobs and the service industry, finding ways to learn new skills and gain responsibilities. She puts those skills to good use with her own small business, an etsy craft store. She is also a skilled barista and mixologist, and enjoys trivia games and baking (she usually doesn’t even use a recipe, thanks to her time managing a bakery).

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Intellectual Property

Hurdles To Obtaining Patent Protection

Hurdles To Obtaining Patent Protection

Laura Marmulstein

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A patent is an intellectual property right that grants the owner the right to exclude others from making, using, importing, offering for sale, or selling the patented invention in the United States for a limited period of years. A patent does not grant the owner the right to make, use, import, offer for sale, or sell the patented invention.

Let’s use skis and a snowboard as an illustrative example of this right to exclude but not the right to use (this first comes to mind, as I’m an avid skier). You invented skis and obtained patent protection on a board that straps onto one foot and another board that straps onto the other foot. You can prevent others from making, using, and selling skis. However, another inventor has a patent on a snowboard that broadly covers a board that straps onto at least one foot. The snowboard patent owner has the right to exclude others from making, using, and selling a snowboard – or broadly, a board that straps onto at least one foot. Accordingly, you cannot make, use, or sell skis, your patented invention, because you would be infringing on the snowboard patent since you would be making, using, or selling a board that straps onto one foot. Thus, a patent gives an owner the right to exclude others from using or selling, but not a right to use or sell, the patented invention.

There are several hurdles to obtaining patent protection. An initial consideration is whether the invention contains subject matter that is eligible for patent protection. Patentable subject matter includes “any new and useful process [(e.g., a manufacturing process or software)], machine [(e.g., a car engine)], manufacture [(e.g., a camera lens or bicycle)], or composition of matter [(e.g., pharmaceutical drugs)], or any new and useful improvement thereof.” 35 U.S.C. § 101.

These categories of patentable subject matter exclude laws of nature, natural phenomena, and abstract ideas (known as “judicial exceptions”). See MPEP § 2106. Laws of nature include naturally occurring principles or equations such as E=mc2 or the law of gravity. A natural phenomena or product of nature is something that is naturally occurring. For example, a cloned sheep that was found to be identical to a sheep found in nature was not eligible for patent protection. See In re Roslin Institute (Edinburgh), 750 F.3d 1333, 1337 (Fed. Cir. 2014).

Abstract ideas include mathematical concepts (e.g., mathematical relationships, formulas, or equations), methods of organizing human activity (e.g., fundamental economic principles or practices such as hedging or mitigating risk, commercial or legal interactions, or managing behavior or relationships), and mental processes (e.g., concepts performed in the human mind such as observations, evaluations, or judgments). See MPEP § 2106.04(a). As an example, software patent applications are often rejected as abstract ideas where the software is simply expressed as code or a set of instructions detached from any medium. Typically, the software needs to be tied to some technology and to provide some technical solution to a technical problem to avoid being rejected as an abstract idea.

The rationale for denying patent protection for these judicial exceptions is to prevent others from monopolizing “the basic tools of scientific and technological work,” which could impede innovation rather than promote it. See MPEP § 2106.

The utility requirement under § 101 requires that the invention have a specific, substantial, and credible utility. See MPEP § 2107. A consideration under the utility inquiry is whether a person of ordinary skill in the art (e.g., in the field of the invention) would accept that the invention, as disclosed, is currently capable of the claimed use. “[A]n application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research.” In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005).

Additional requirements for patentability include (1) novelty and (2) nonobviousness. Novelty (or whether the invention is new) requires that the invention was not known, used, or sold by others or patented or described in a printed publication, or otherwise available to the public, prior to filing the patent application. See 35 U.S.C. § 102. These pre-existing disclosures, uses, or sales of the invention by others are known as “prior art.” If all of the features of your invention cannot be found in a single prior art reference (i.e., at least one feature is different), your invention is considered to be novel and passes this requirement.

Non-obviousness requires that the differences between the invention and prior art would not have been obvious to a person having ordinary skill in the art at the time the invention was made. See 35 U.S.C. § 103. This hurdle can be a bit more difficult to overcome than the novelty requirement, as it requires your invention be sufficiently different from the prior art. In other words, if the one feature of your invention that is different from the prior art is a minor tweak that anyone would have thought to do, it might be considered obvious and not protectable.

Finally, an inventor can lose the right to a patent if the inventor delays too long in seeking patent protection. If an inventor publicly discloses or uses the invention, or sells the invention or offers the invention for sale for over a year prior to filing a patent application, then the inventor loses the right to obtain patent protection in the U.S. Most foreign jurisdictions do not allow this year grace period and a public disclosure, use, or sale may act as an absolute bar to patentability regardless of when it occurred relative to filing the patent application. The rationale for this requirement is to prevent inventors from exploiting their invention for a period of time prior to obtaining patent protection. Accordingly, it is best practice is to file a patent application before any public disclosure, use, offer for sale, or sale of the invention.

In conclusion, if you believe you have patentable subject matter that is novel or has some new feature that is substantially different from the prior art, you should consult with a patent attorney to determine how to best protect your invention prior to any public disclosure, use, or sale.

Disclaimer: The images used in this article were provided courtesy of Unsplash

ABOUT THE AUTHOR

ASSOCIATE

Laura counsels clients on legal issues related to intellectual property, including patents, trademarks, and copyrights. Laura helps clients build strong intellectual property portfolios, taking into account various types of protection options, such as utility and design patents, including both U.S. and foreign, trademark and trade dress registrations, and copyright registrations.

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