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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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Categories
Intellectual Property

What to Expect When You Register a Trademark

What to Expect When You Register a Trademark

Sophi Robbins

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The process of protecting your intellectual property can be daunting, especially for first-time business owners. However, a legal expert can navigate the nuance of trademark law and get you an application without too much headache or strain on your pocketbook. Any successful company has trademark registrations. If you go through this process at the onset, it is much less expensive than spending a lot of time and money branding your company only to realize that you are infringing upon someone else’s mark and must rebrand. The following steps are laid out to explain the process of registering a trademark.

Ensuring Success

The first step when filing a trademark application is to research potential competition and threats to the success of your marks. This is referred to as a Knock-Out Search. Your attorney will do a comprehensive search of the current and pending trademarks within your industry, as well as anything else that could pose a threat to your ability to register your mark. The search will look for similar words, shapes, and spellings. It might be the case that your intended applications aren’t strong contenders, and though disappointing, it’s best to make rebranding choices at this early stage of the process before time and resources have been spent on a name that you will eventually have to change.

Filing for Registration

Once you’ve worked with your attorney to determine what marks you will file, it’s time to file your application for registration with the United States Patent and Trademark Office (USPTO). You can file the mark after having used it in commerce as a 1(a) application, or you can file a mark that you intend to use as a 1(b) application. The process is largely the same, with a few small differences that your attorney can walk you through. For a use-in-commerce application, you must show proof that you are currently using the mark on the goods specified in your application. For an intent-to-use application, you can provide that evidence later.

Waiting It Out

Once your attorney has filed your application, an examining attorney from the USPTO will review your application. If they do not identify any problems, the mark will be published for opposition. If the examining attorney does identify an area of concern, an Office Action will be issued. Often, the reason for this is a likelihood for confusion with a prior registration, a mark being merely descriptive, or the need to disclaim part of the mark like the words “bar & grill” from a restaurant’s name. There are numerous reasons why an application would be initially rejected, and office actions are not uncommon. In the case of an office action, there is typically 6 months from the date of issuance to respond.

If the PTO examiner determines there are no reasons to object to your mark, they will approve it for publication, and it will be published in a public-facing gazette. Third parties will have 30 days from the date of publication to file an opposition or extension of time to oppose the registration of your mark. This is relatively rare, but it does come up in 3-4% of cases. If it should occur, your mark will take a detour from the typical registration process and your attorney will walk you through those steps.  

If a mark passes opposition, you should have very few obstacles between you and the finish line! A 1(a) mark which has passed will be placed in a queue to be officially registered, without you or an attorney needing to take any additional action. Again, with the current back-ups, this could take several months. A 1(b) mark which passes opposition will eventually be issued a Notice of Allowance (NOA), which indicates that as soon as you can prove your use in commerce, the mark can be registered. From the date of NOA, you have 6 months to file a Statement of Use, which includes specimens of your mark. If you are still not using the mark at that time, extensions can be filed every 6 months up to 5 times (or 3 years from the date of NOA.) If you don’t use the mark in that time frame, you’ll lose the application and be required to start over again if you later change your mind.

Registration at Last

When your mark finally reaches registration, you will have exclusive rights to the use of the mark. This is when you will begin using the ® symbol. Your responsibilities now are to maintain documentation and file periodic renewals. The first deadline is in between the fifth and sixth anniversary of the date of registration, followed by renewals every 10th year. It is also a good idea to keep a “watch” on your mark so that if other marks are published, which you might want to oppose, you are alerted. There are automatic services that will notify you of such activity, and your attorney’s likely use something of the sort.

So, Are You Ready for the First Step?

Knowing what you’re up against will prepare you but having the right team to work with is essential. Whether you’re a first-time small business owner or part of a growing company that’s ramping up its product lines, relying on a strong legal team is going to make the trademark process much more approachable. If you are interested in starting this process with your own marks, reach out to us and we’ll be happy to answer any questions.

ABOUT THE AUTHOR

OFFICE ASSISTANT

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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