The Trademark Symbol is Ugly – Do I Have to Use It? by @CircleLegal

by Kelley Keller | Featured Contributor

The trademark symbol is ugly and is cluttering up my marketing collateral.  Do I really have to use it?

The short answer is NO, but you SHOULD!  Read on to find out why.

What exactly are trademark symbols?

You’ve seen them a million times – a superscript TM or SM or the letter R in a circle – ®.  But do you actually know the difference and when to use them?  Wonder no more!

The TM and SM:  The little TM (trademark) or SM (service mark) designation is used to alert the public that you are claiming proprietary trademark rights in a particular mark.  You are free to use it whether you have filed a trademark application with the U.S. Patent and Trademark Office or not.  It is reserved for all unregistered marks.

Key Point:  Use of the TM or SM symbol is not regulated by law and does not have any legal significance in that it does not create or diminish one’s legal branding rights.  However, it does serve an important function in the marketplace and should always be used when possible (and practical).  By putting others on notice of your claim of rights in a particular mark, you help to diminish inadvertent trademark infringement which causes unnecessary confusion among consumers and disrupts everyday business.

The Letter R in a Circle:  The federal registration symbol – ® — on the other hand, may only be used on marks that have been registered in the U.S. Patent and Trademark Office and only for the goods or services listed in the federal registration.  It may not be used when a mark is the subject of a pending application; it may only be used once the application proceeds to registration.  Unlike the TM or SM, use of this symbol is regulated by federal law.

Key Point:  Although the law limits the instances when the encircled R can be used, it does not actually require you to use it.  But it is very wise to do so!  Not only does use of this symbol provide public notice of your registered mark, it gives you a leg up in an infringement law suit if you ever have to go down that road.  Failure to use this symbol on registered marks actually impedes your ability to collect money damages or recover lost profits in such a suit!

Where do I place trademark symbols? 

There are no specific rules regarding placement of a trademark symbol, but it is usual and customary to put it in the upper right hand of a mark.  If that is aesthetically displeasing or physically impossible (or impractical), moving it to the lower right hand corner of a mark is certainly appropriate.  It should not be used above, below, or to the left of a mark.

How often do I have to use trademark symbols on my marketing material?

The rule of thumb is to use the appropriate trademark symbol at least once in a writing or other marketing piece.  It is most common to use the TM, SM, or ® the first time a mark appears in the piece unless such use is visually disruptive or so small it is difficult to see.  In this case, you should include it on a prominent use of the mark so that it is readily identifiable by a consumer.

The Takeaways:

• Use TM or SM for unregistered marks and ® for federally registered marks.
• Adhere to the norms when placing the symbol next to your mark.
• Don’t overuse trademark symbols and create visual clutter on your promo/marketing pieces.

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Kelley Keller, Esq. is President of Circle Legal and a 20-year veteran of the intellectual property law field. As an intellectual property attorney, she has deep experience helping businesses of all sizes identify, manage, and protect their trademarks, copyrights, patents, and trade secrets, including many household brands like Toyota, Disney, and Verizon, which she worked with during her tenure at one of the largest IP law firms in Washington, D.C. At Circle Legal, she focuses on redesigning the legal experience for innovative companies, business owners, and their families by providing comprehensive services that build solid legal, insurance, finance, and tax foundations for her clients (their LIFT Foundations).

Kelley’s personable nature and ability to explain complex legal issues in simple terms set her apart from most attorneys. She is relentless in helping businesses, their owners, and their families mitigate risks and open the doors to new opportunities. You can hear her helping business owners every week on the Circle Legal Business Fix-It Show broadcasting on iHeartRadio.

You can find Kelley on Twitter, LinkedIn, Facebook, and Google+ and download her free ebook, 41 Steps to Start a Business and Build Wealth the Right Way.

Kelley Keller

Kelley Keller, Esq. is President of The Keller Law Firm and a 20-year veteran of the intellectual property law field. As an intellectual property attorney, she has deep experience helping businesses of all sizes identify, manage, and protect their trademarks, copyrights, patents, and trade secrets, including many household brands like Toyota, Disney, and Verizon, which she worked with during her tenure at two of the largest IP law firms in Washington, D.C.  Kelley also offers education to small business owners, creative and coaching professionals, digital entrepreneurs, and established companies about starting, building, and growing a Rock Solid Business on an strong foundation through her website KelleyKeller.com.

Kelley’s personable nature and ability to explain complex legal issues in simple terms set her apart from most attorneys. She is relentless in helping businesses, their owners, and their families mitigate risks and open the doors to new opportunities.

You can find Kelley on Twitter, LinkedIn,Facebook, and Instagram.