Designating Your Trademark in Use

Registered and Unregistered Trademark Symbols

What is a Trademark?

A trademark is word, design, or sound that identifies the source of a product or service. Trademarks are used “in commerce,” such as on product packaging in stores or in online descriptions. Trademarks set customer expectations regarding quality of the product. These expectations can influence purchasing decisions. For example, “Elmer’s” is a well-known trademark for glue. Their glue is non-toxic, dries quickly, and works for general purposes. Therefore, many parents will automatically reach for Elmer’s glue over competitors when making back-to-school purchases.

How are Trademark Rights Established?

Use in commerce can establish common law trademark rights, if the mark is not confusingly similar to another mark. However, common law rights can be geographically limited based on the market reach of the product or service.

Alternatively, trademark rights can be established through registration. For example, federal registration requires filing a trademark application with the United States Patent and Trademark Office (USPTO). An applicant can file either before or after actual use of the trademark. Filing before is called an “intent-to-use” application, whereas filing after is referred to as an “actual use” application.

Regardless of the type of application filed, actual use will have to be proven before registration. For proof, the entire phrase or design will have to be used in at least one instance of the sample submitted to the USPTO. The application may prevent others from receiving a trademark that is too similar, if filed later. However, the applicant does not have a trademark until the USPTO allows registration.

How to Designate Goods or Services with a Trademark

You may have noticed that sometimes a trademark is labeled with ™ and others are labeled with ®. The difference between the two is that ™ is used for trademarks that are not federally registered. This includes common law trademarks and when an application is filed but not yet registered. On the other hand, ® can be used when a registration has been secured from the USPTO.

Use of the symbol is not federally regulated. However, the ® symbol can only be used with federally registered trademarks. Furthermore, the ® symbol should be used with the full trademark at least once in commerce with the product. However, some companies have a policy of using the symbol every time the trademark is used to avoid ambiguity. For example, failure to use the symbol at all can result in decreased rights because other are not “on notice” to rights in the registered trademark.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

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