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Last updated on: November 21, 2023
One of the benefits of trademark registration is that it allows the owner to use the ® trademark registration symbol.
The ® symbol puts potential infringers on notice that your company owns a registration for the mark and has exclusive rights to use it. If you ever need to sue an infringer, using the registration symbol makes it easier to prove that an infringer knew about your company’s rights.
But what is the proper way to use the ® symbol? And what happens if an infringer is using the symbol for knockoffs? The misuse of trademark registration symbol can become an issue if your company applies it incorrectly or if an infringer uses the trademark symbol to indicate that knockoff goods are actually genuine.
This article discusses how to correctly use the ® symbol and what to do about the misuse of trademark registration symbol by an infringer.
What are trademark registration symbols?
A trademark registration symbol ® is shorthand to show that your mark has been registered with a country’s intellectual property office. In the United States, the U.S. Patent and Trademark Office (USPTO) is the government agency that registers trademarks.
A brand owner is not required by law to display the registration symbol, but it helps to put others on notice of your company’s rights in the mark. In fact, using the registration symbol makes it much easier for the brand owner to get money damages in an infringement lawsuit.
You have probably seen trademarks with symbols including ®, TM, or SM.
The registration symbol ® should only be used when the mark has been registered. You might also see indications like “R Reg. U.S. Pat. & Tm. Off.” to indicate that a mark is registered with the USPTO. If your company owns a trademark registration, it is strongly recommended that you use the registration symbol or otherwise note that your mark is registered. To get money damages under U.S. trademark law, you must show that the infringer had notice of your rights in the registered mark. One simple way to do this is to show that your company used the registration symbol. Otherwise, you will have to show that the infringer actually knew of your rights, which is much more difficult.
“TM” indicates that the mark is being used as a trademark, but is not necessarily registered. TM is used to indicate to consumers, competitors, and potential infringers that a company is treating a word as a trademark, even if the company has not registered the mark.
“SM” means “service mark” and the symbol is used similarly to “TM.” To state what might seem obvious, a service mark is the brand indicator when the mark covers services, rather than goods. That is, if you sell clothing using the XYZ Brand, you will use the “TM” symbol (or ®, if registered) on clothing labels or tags. On the other hand, if you operate retail clothing stores using the ABC Brand, you might put ABC BrandSM on store signage. In practice, though, SM is often used interchangeably with TM, and TM is often more widely understood to indicate trademark rights.
You may hear about the misuse of trademark registration symbol in a couple of different scenarios:
Improper use by the brand owner
In some countries, using the ® symbol when the mark is not registered is illegal. In the United States, it is not, but it may indicate an intent to deceive the public or defraud the USPTO. The USPTO’s examination manual states that, “Improper use of the federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud.”
In the most extreme situation, misuse of trademark registration symbols can be grounds for refusal to register the mark. However, intent is very important and the USPTO will consider the circumstances of incorrect use to see whether it is fraudulent or simply accidental.
For example, one decision of the USPTO’s Trademark Trial and Appeal Board stated that “We find Applicant’s mistaken purported use of the federal registration symbol overcomes Opposer’s claim of a fraudulent misuse of the federal registration symbol.” In that case, the applicant had indicated in a limited way and without legal advice that the mark was registered even though it was not. This illustrates how important intention is in registration misuse cases.
Trademark owners should be cautious about the use of the ® registration symbol and should not use the symbol if the mark is not registered. This is more complicated if a company is using the mark in more than one country and has registrations in one country but not another. In that instance, indicate where the mark is registered. For example, if your company displays the symbol on its website, include a footer stating the countries where the mark is registered, such as “Registered trademark in the United States.”
Improper use by an infringer
If an infringer improperly uses the registration symbol with a mark that it does not own, the trademark owner should be concerned. In any infringement case, evidence of the alleged infringer’s bad faith adoption and use of the mark is a factor in proving infringement. If the infringer knew it did not have rights in a registered mark and used the ® symbol, this is evidence of the infringer’s bad faith.
At its core, trademark law is about consumer protection. Trademarks are important because they tell the public what they can expect from goods or services sold using a particular mark. If customers lose their trust in a brand, that will hurt the trademark owner. That trust can be lost when an infringer misleads the public about the brand, which can include misleading use of the ® symbol.
Trademark rights in the U.S. and some other countries can be lost by failing to properly use the mark and enforce rights in the mark. In other words, your company’s trademark can become weaker if you are not careful about what the public believes about the mark.
You might think about trademark enforcement as sending cease-and-desist letters or suing infringers. This is important, but you should also consider proactive ways to ensure the mark is being used properly. This includes correctly using TM, SM, and ®.
A company’s in-house lawyers, trademark administrators, or others in charge of trademark registration should educate employees about how to use the mark and the trademark symbols. For example, show marking and public relations colleagues how to use the mark in written materials. As a general matter, it is helpful to set the mark off in all caps, with the appropriate symbol at least the first time the trademark is mentioned. For a registered mark, this could look like:
“Now introducing XYZ® widgets.”
Others in the company can be valuable members of the trademark enforcement team. Sales representatives are often closest to consumers. Teach them basics about the correct use of trademarks and encourage them to check in if they see the company’s mark being used incorrectly or if they see knockoffs being sold.
It might take some effort to educate your team about using trademarks correctly, but this will pay off with a stronger brand.
So now you’ve learned about trademarks and how to use the ® symbol correctly. Your sales and marketing teams are on board with helping the company use the mark correctly and bringing potential infringement to your attention. Unfortunately, with the easy availability of knockoffs, it’s nearly impossible for one person or even an entire department to keep track of all the ways trademark registration symbols can be misused.
The good news is that technology tools can help monitor how trademarks are being used in marketplaces, social media, and more. Real-time detection software can spot infringement and misuse and even identify patterns to help use your enforcement budget to most efficiently target bad actors.
Red Points’ Trademark Protection Services use bot-powered search and machine learning to comprehensively identify misuse of trademarks. Our advanced AI technology, driven by machine learning improves detection over time by leveraging your takedown history. Whether you prefer to have control over the enforcing process or want to set up automation rules that do the job for you, taking down trademark misuse has never been easier.
The strength of your company’s brands depends on using trademarks correctly and keeping infringers at bay. That’s why it’s crucial to detect and prevent misuse of trademark registration symbols.
An automated solution can help you find and stop misuse. Rather than spending hundreds of hours of employee time on hit-or-miss monitoring, trademark protection software provides a consistent way to identify and report trademark infringement.To learn more about how Red Points can help your company, request a demo.