You are probably familiar with two small symbols commonly displayed after the use of a U.S. trademark, the ® and the ™ symbols. But you may wonder what the difference between them is. These two symbols indicate that the owner of a mark is asserting trademark rights in connection with the mark. These “trademark” symbols are intended as notice or a warning to third parties regarding the type of rights that accompany a mark.
The ® symbol indicates that a mark is protected by a federal trademark registration while the ™ symbol indicates the owner of the mark is asserting common law trademark rights in the mark. Common law rights arise from the actual use of a mark and may allow the common law user to successfully challenge a trademark registration or application. There is also the ℠ symbol, which indicates that the owner claims common law service mark rights in the mark. Service mark rights are similar to trademark rights, except that a service mark is associated with services instead of goods. However, service marks are also commonly referred to as trademarks despite some important legal differences.
It is important that you use the proper symbol to mark your trademark. Using trademark notice symbols properly provides notice to others not to use your trademark and lets them know what kind or rights you claim. But there are other reasons it is important to properly use the trademark notice symbols. For example, if you have a trademark registration and fail to use the statutory notice, e.g., the ® symbol, then you cannot sue for damages unless you can prove that the infringer actually had notice of your trademark rights. Also, if you use the ® symbol when you do not have a trademark registration, you could be liable for false advertising or it could be used against you as an unclean hands defense in litigation if you attempt to assert a trademark that has been improperly marked.
As mentioned, the ® is the symbol that indicates the mark has been federally registered with the United States Patent and Trademark Office. Federal trademark registration conveys additional benefits that are not available under common law. Owning a federal trademark registration on the Principal Register provides several advantages. One of the main advantages is the presumption that the owner has the exclusive right to use the mark in commerce throughout the entire United States in connection with the goods or services described in the registration. It also provides and constructive notice to the public of your claim of ownership of the mark and may remove defenses from defendants claiming they did not know about your trademark. Federal registration also allows the mark holder to bring an action concerning the mark in federal court. Moreover, if the registrant is interested in filing for international trademarks, the use of the U.S. registration can serve as a basis to obtain registration in foreign countries.
Each of the trademark notice symbols can be useful and an important piece of your overall trademark strategy. A trademark attorney will be able to help you with appropriate symbols for your trademark and help you understand the rights to which you are entitled. You should also consider speaking with a trademark attorney about your eligibility to file a federal trademark application so that you can take advantage of the protections provided under federal statute.