Trademark Symbol – ™ vs ®
The Trademark symbol (™), often used on logos, names, phrases, or words, is used proactively by companies to indicate the mark is their exclusive property. The ™ symbol has no legal meaning, but can be used on unregistered marks as a “no trespassing” sign.
If you are using ™ , the trademarks is most likely not registered. As such, your rights to enforce an unregistered trademark would stem from common law … which may (or may not) apply depending on whether the mark is proven to be protectable, and proven that you are the owner.
With an unregistered trademark, the burden is on the owner to prove it owns common law rights (ownership and protectability) in the trademark. With a registered trademark the court can presume that you are the owner and that the mark is protectable. See my article entitled Benefits of Trademark Registration for a full discussion of registered trademark rights.
Registered Trademark ®
The registered trademark symbol is statutory notice that the mark is registered with the United States Patent and Trademark Office (USPTO). Use of the ® enables the owner to claim profits and damages from a defendant who has infringed your trademark.
The use of the registered trademark symbol is an indication allowed by law that the trademark is registered with the USPTO. ® can ONLY be used with the goods and services listed on the registration. ® can ONLY be used for the trademark displayed on the registration certificate.
How to Provide Notice of a Registered Trademark with the Trademark Symbol
“…a registrant of a mark registered in the Patent and Trademark Office, may give notice that his mark is registered by displaying with the mark the words “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the letter R enclosed in a circle, thus ®”
Consequences of Nonuse of Registered Trademark Symbol
The Lanham Act requires “statutory notice” (use of ® — or as described above) in order to claim damages and profits of a registered trademark.
If you do not use the ® Symbol, a Defendant can Claim that you Waived your Right to Financial Damages in a later Lawsuit for Infringement.
“…in any suit for infringement under this Act by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this Act unless the defendant had actual notice of the registration.”
If you failed to provide statutory notice by using the trademark symbol, all is not lost. You may still be able to get damages – if you can prove that the defendant had “actual notice” of your registered trademark.
HINT: simply using the Trademark Symbol is much easier and less costly to prove than actual notice.
Consequences of Misuse of the Registered Trademark Symbol
The Registered Trademark Symbol must not be used in connection with marks not yet federally registered. It must not be used, for example, with marks for which an application to register is still pending.
Using the Registered Trademark Symbol on goods or services that are not registered may result in serious repercussions, such as a false advertising claim. It could also result in cancellation of any pending trademark applications that use the registered trademark symbol.
However, modern courts have been extremely lenient in accepting explanations for misuse of the statutory notice.