Although small in stature, trademark symbols (™ and ®) are an important component of any brand’s trademark protection strategy – but making sure that the correct symbol goes in the right place can be confusing at times.

To start, which one should you use? The rule in the U.S. and in most other countries is that the ™ symbol (“trademark”) may be used in connection with marks that are not yet the subject of a federal trademark registration – either because an application is pending, or because the company is choosing to only claim common-law rights without seeking registration. However, rules vary by country; use of the ™ symbol in certain jurisdictions may be viewed as claiming that a mark is registered, so check both the trademark status and local requirements before going to press.

In the U.S., there is no legal requirement to use the ™ symbol in connection with unregistered trademarks, but doing so puts third parties on notice that the company is claiming trademark rights in that word, phrase, and/or design. The “SM” symbol can also be used in a similar manner as ™ in the case of the provision of services, rather than goods.

The ® registration symbol, on the other hand, may only be used in connection with federally registered trademarks – trademarks that are the subject of pending federal applications; state applications/registrations and common-law marks may not be denoted with the ® symbol.

So, are brand owners required to use these trademark symbols? In the case of the ® symbol for registered marks, Section 29 of the federal Trademark Act explicitly states that a trademark registrant must give “notice” of a registration by using the proper symbol or notifying language in order to recover profits or money damages in an infringement suit. Accordingly, failing to use the ® symbol in connection with a registered mark may have negative financial consequences in a future litigation.

Although failure to properly notice registered trademarks is not an affirmative defense for infringers, it will (perhaps significantly) limit the remedies to which the trademark owner is entitled. If the trademark is not properly marked, the registrant’s statutory damages are limited to those that arose after the defendant received actual notification of the infringement charge.

But where is the best place for these symbols? The statute requires the ® symbol or notice statement to be “with the mark,” but does not place any other requirements on the marking’s location. Ideally, we recommend placing the ® registration symbol next to the registered mark in question – e.g., Trademark®. And although the ™ symbol is not subject to the same technical requirements from a damages perspective, the best practice is to also use this designation in close proximity to the claimed trademark, to sufficiently link the symbol with the mark.

And do you have to use the symbol with every use of a trademark? When it comes to multiple mentions of a trademark – registered or unregistered – on a website page, brochure, packaging, display, or other material, we recommend marking the first and most prominent use of the mark (for example, the first use in a website page header).

Every situation is different, so when in doubt we recommend consulting with trademark counsel as to the appropriate use of trademark symbols for your brands.

This article appeared in the September 2018 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.

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