Trademark symbols and their usage

Trademark symbols are everywhere … you see them on a Pepsi bottle and Adidas t-shirt, you hear them when listening to the NBC chimes or the roar of the MGM lion, and you even see them when you read the name of a famous celebrity like Julia Roberts. These brand identities are distinctive words, names, symbols, and sounds that are important in marketing a specific product or service and, therefore, are protected under trademark law.

Trademark law is a form of intellectual property rights, which provide owners, inventors, and creators of property protection from unauthorized use. The three primary forms of intellectual property are patents, copyrights, and trademarks. A patent protects an inventor's creation, while copyrights protect literary and artistic works. Trademarks safeguard distinctive words, names, symbols, and sounds used in commerce to distinguish goods and services from one business owner to another.

The symbols: What do TM, SM and ® mean?

Trademarks can be registered through the United States Patent and Trademark Office (USPTO). Both goods and services, once duly registered, can receive a federal trademark. If you use a distinctive word, phrase or symbol in business, and that word, phrase or symbol has been registered with the USPTO, you must indicate its registration and resulting federal protection by placing next to it the symbol ®.

If you do decide to register your distinctive mark, you are not only allowed to use the ® symbol, but this symbol gives you, the owner, the exclusive, nationwide right to use your mark on the type(s) of goods and/or services as to which it was registered. Federal registration also gives you the ability to sue infringers of your mark in federal court. You can also stop the importation of goods using an infringing mark and use your U.S. registration as a basis to obtain registration internationally.

Recently, the federal registration mark has broadened its protection to cover the cyberworld by protecting trademark owners from cybersquatting, which is when someone tries to register a domain name that is identical or similar to previously registered and well-known marks and then either uses that domain in an attempt to associate his own goods or services with the well-known mark or tries to sell the domain to the rightful mark owner for an inflated sum of money. Congress passed and President Clinton signed into law the Anti-Cybersquatting Consumer Protection Act in November 1999, which allows a trademark owner to sue cybersquatters for damages and recover a domain name from a person who, with a bad faith intent to profit, registered a domain name that is identical or similar to a distinctive or famous trademark. This has been incredibly important for celebrities like Morgan Freeman who have found their names used in domain names by cybersquatters.

If you do not register your distinctive sign with the USTPO, you can accompany your symbol of origin with what is called a “common law” trademark. Common law trademarks use either the ™ (trademark, for goods) or SM (service mark, for services) symbol. This informs the business world that, despite your lack of registration of your mark with the USPTO, you are still the rightful owner of that particular symbol. (The right to use a mark and accompany it with either common law trademark symbol assumes that no one else is already the rightful owner of that mark, using it to designate the same or similar goods and/or services to yours—if someone is doing so, broadly speaking, you cannot qualify for either federal or common law protection.) Although seemingly simpler than federal registration, common law trademark protection is limited; for example, if you have a logo for your company and do not register your logo for trademark protection with the USTPO and a similar company registers a comparable logo, the registered owner can, in many circumstances, prevent you from using your logo going forward.

Furthermore, common law or “state” trademarks protect your mark only in a specific state (and possibly only in a portion of that state), while federal trademarks protect your mark across the country. Depending on whether you engage in interstate or intrastate commerce is one consideration in determining whether you should register your trademark with the USPTO or opt for the lesser protection of the common law. Businesses operating in only one state usually find that filing a state trademark offers enough protection. However, businesses operating in interstate commerce may find a federal trademark is needed for protection across the country. Companies must conduct interstate commerce in order to secure a federal trademark.

How to trademark a distinctive sign

If you are considering establishing a trademark for your particular mark, you must first determine whether or not your mark is unique, or whether the same or a similar mark has been registered already to cover goods and/or services that are the same or similar to yours. Individuals can perform a trademark search using TESS, the USTPO search engine, to determine if a mark is claimed by someone else. Individuals can also hire attorneys and search firms to review federally registered signs to determine availability.

Once you've determined that your sign is available, you must complete the appropriate application. Trademarks are classified by a business's particular goods and services. The USPTO reviews trademark applications for federal registration and determines whether an applicant meets the requirements to be federally registered.

Don't use the ® right away!

It takes between 10-16 months to secure trademark registration with the USPTO. However, your mark itself is protected as of the date of filing (not the later date of issue), allowing you to begin using your trademark immediately. Just remember that the federal ® symbol can only be used to accompany your mark after the USPTO actually registers the mark; while the application is still pending, the ™ or SM common law designations must be used. Once an owner's mark is federally registered, federal protection can last indefinitely, provided that the owner continues to use the sign to represent goods and/or services, and pays a regular renewal fee. This protection differs from copyright and patent protection, both of which eventually expire.