Where does the Trademark Symbol Go?

The r-in-a-circle ® symbol for a federally registered trademark must be placed next to the trademark.

The circle r symbol is only for an official trademark registration and not for common law trademarks.  Unregistered trademarks are not protected like those with a federal registration.

The designation should be placed immediately following the mark that is registered. The norm is to place the symbol in superscript in the upper-right-hand corner, or in some cases, in subscript in the lower right-hand corner.  If the upper-right corner is not aesthetically pleasing or practical, the bottom right corner is also acceptable. On the right after word marks is perfect. Avoid placing the symbol on the left, above, or directly below the mark.  In press releases, for example, trademark owners tend to put the symbol right after the last particular word of the trademark is mentioned.  

What if the Trademark Owner does not Use the Federal Trademark Registration Symbol? 

There is a chance that the trademark owner would lose damages in a trademark infringement lawsuit if there is no use of the trademark registration symbol.  

Using proper trademark symbols serves the public interest and helps to restrict infringing uses of others’ marks. Furthermore, in the case of registered marks that are on the federal register in the United States Patent and Trademark Office (USPTO), use of the proper symbols provides “constructive” notice of a claim of trademark rights, see 15 U.S.C. § 1072. Constructive notice is a type of notice imputed by law whereas actual notice is notice by factual knowledge of something. Constructive notice is charged in instances where a reasonably prudent person should know or should have known about something even if he or she does not have actual notice of that something. However, if the owner of the mark fails to use the registration symbol with the mark, he or she is precluded from recovering lost profits or money damages in an infringement suit unless the defendant had actual (not “constructive”) notice of the registration. This small detail may have an immeasurably large impact in an enforcement proceeding and should not be overlooked!

Failure to use the statutory notice symbol, such as ®, doesn’t provide a defense against a claim of trademark infringement. It does, however, limit the remedies available to the trademark holder. Specifically, if the statutory notice is not used, the trademark owner may only claim damages that occur after the infringer has been explicitly notified of the infringement. In legal terms, “The only consequence of a holder failing to give such notice is that damages might start running later than if the notice had been given.”  

The Lanham Act, 15 USC §1111 states this principle like this: Notwithstanding the provisions of section 1072 of this title, 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 within a circle, thus ®; and in any suit for infringement under this chapter by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration.

The Important Purpose of Actual Notice

When a trademark holder sends a “cease and desist” or an “infringement” letter to an alleged infringer, it constitutes “actual notice.” This notice is significant because, once received, it is one of the legal requirements that allows the trademark owner to start recovering damages from the date the infringer was notified. Whether the infringer has received this notice is a matter of fact and can influence the extent of damages and profits recoverable.  Actual notice of the registration can happen in many forms, from a demand letter being sent to an infringer to the use of the registered trademark symbol ® being on products or packaging or in advertising, to saying that a trademark is registered on products or packaging or in advertising.

The Lanham Act, 15 USC §1072 states this principle like this:  Notice of registration of a mark and display thereof with the mark and recovery of profits and damages in infringement suit, display of the statutory words or symbol is immaterial if defendants have actual notice of the registration of the trademark.  Admiral Corp. v. Sewing Mach. Sales Corp., S.D.N.Y.1957, 156 F.Supp. 796, 116 U.S.P.Q. 17.  

The trademark registration in relationship to the goods does matter.  For example, in one case, a trademark owner that had not registered its mark for use on sunglasses was not entitled to statutory damages under Lanham Act in connection with competitor’s sale of accused sunglasses that bore owner’s mark, although mark had been registered to be used on wide range of products.  Coach, Inc. v. Asia Pacific Trading Co., Inc., C.D.Cal.2009, 676 F.Supp.2d 914.

Counterfeiting and Damages

Under Lanham Act § 34(d)(1)(B) (15 U.S.C.A. § 1116(d)(1)(B)), a trademark that meets the criteria of a counterfeit mark allows its owner to recover damages, including statutory damages, irrespective of whether the infringer was aware of the trademark’s registration. This specific provision takes precedence over the more general requirements of statutory notice under Lanham Act § 29 (15 U.S.C.A. § 1111), highlighting that damages can still be pursued for counterfeiting even if the registered mark’s statutory notice requirements were not initially met.  (The Lanham Act is the primary federal statute that sets out trademark law.)

What are Trademark Symbols?

The different trademark symbols come in three varieties: TM, SM, and ®, each serving a distinct purpose.  It is important to have the proper use of the appropriate symbol.

• TM (Trademark): Used for unregistered trademarks associated with goods, such as clothing or electronics. This symbol indicates that you are claiming common law trademark rights to the trademark, although it hasn’t been registered.
• SM (Service Mark): Similar to the TM symbol but used for services like auto repairs or banking. It signals the use of a service mark without registration.  This symbol is also for common law protection of an unregistered mark.
• ® (Registered): This symbol is reserved for trademarks officially registered with the U.S. Patent and Trademark Office (USPTO). It’s legally protected and can only be used after official registration, signaling a higher level of legal protection.  This shows the exclusive rights the trademark owner has – the trademark in relationship to the goods or services offered in commerce.

When and How to Use Trademark Symbols

• Using TM and SM Symbols: There is no legal requirement to use TM or SM symbols, but doing so can deter others from using a similar mark, thereby avoiding market confusion. These should be placed next to the mark in all appearances on products, packaging, and marketing materials. To avoid visual clutter, use these symbols at least once in a prominent position within individual documents. The TM symbol is for products or goods – trademark.  The SM symbol is for services – service mark.  Since there is a mark for the federal registration, the TM and SM symbols should only be used for common law trademarks, an unregistered mark. A mark subject to a pending trademark application could use either of these symbols during the registration process when the mark is in use in commerce until registration.
• Using the ® Symbol: Only use the registered symbol for trademarks that have been federally registered for the goods/services listed in the registration. Misuse of this symbol, whether intentional or accidental, can have legal repercussions, so ensure its use is strictly according to the law.

What if the Trademark Owner Uses the Federal Trademark Registration Symbol on an Unregistered Mark? 

​Improper use – misuse – of the federal registration symbol, “®,” that is deliberate and with the intent to deceive or mislead the public or the USPTO is fraud and a violation of federal law. This use of a trademark symbol before the mark is registered can cause a registration to be cancelled.  See Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Wells Fargo & Co. v. Lundeen & Assoc., 20 USPQ2d 1156 (TTAB 1991). 

The owner of a trademark registered in the United States may display with the mark a notice of that registration, such as the registration symbol consisting of “the letter R enclosed within a circle.” 15 U.S.C. § 1111. The improper use of a registration notice in connection with an unregistered mark, if done with intent to deceive the purchasing public or others in the trade into believing that the mark is registered, is a ground for denying the registration of an otherwise registrable mark. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1101, 192 USPQ 24, 27 (CCPA 1976); see also Johnson Controls, Inc. v. Concorde Battery Corp., 228 USPQ 39, 44 (TTAB 1985); Libbey–Owens–Ford Glass Co. v. Plastron, Inc., 80 USPQ 591, 592 (Comm’r Pat.1949); Weil & Durrse v. United Piece Dye Works, 70 USPQ 36, 37 (Comm’r Pat.1946). In Johnson Controls, the Trademark Trial and Appeal Board set forth its position as follows:

The improper use of the registration symbol by an applicant will defeat applicant’s right to registration only in those cases where it is conclusively established that the misuse of the symbol was occasioned by an intent to deceive the purchasing public or others in the trade into believing that the mark was registered.

228 USPQ at 44. The Trademark Manual of Examination Procedure requires denial of registration “[i]f there is clear evidence of fraud in the use of the registration symbol on specimens in an application.” In situations involving only questionable misuse, the examining attorney is required to inform the applicant of the illegality of the use of a registration symbol in connection with a mark for which no federal registration exists. 

Also, misuse of the federal registration symbol can be cause to deny a false advertising claim under trademark law.  In one case, a real estate company did not allege that it was competitor of state university or that it suffered competitive business injury as a result of university’s alleged misuse of federal trademark registration symbol, and therefore company lacked standing to pursue claim against university officials for false advertising under Lanham Act. Virginia Polytechnic Inst. and State University v. Hokie Real Estate, Inc., W.D.Va.2011, 813 F.Supp.2d 745, 101 U.S.P.Q.2d 1405.

This misuse of the federal trademark registration symbol can be cause for a reduction in damages in any trademark litigation.  Misconduct on the part of a trademark owner may in some circumstances limit or preclude an award of damages, profits, or injunctive relief in an action for trademark infringement. This defense of unclean hands does not necessarily constitute a defense to liability, frequently operating instead merely to limit the nature or scope of the available relief. Unclean hands is typically encountered in trademark infringement actions, but do not exhaust the potential scope of the doctrine. Other misconduct by the trademark owner toward the public, the defendant, or the court may also justify a partial or total denial of relief. The doctrine of unclean hands is applicable in actions for the infringement of registered trademarks under § 32 of the Lanham Act and in actions involving unregistered marks under § 43(a) of the Act and at common law.

That said, mistaken uses of the circle r symbol are acceptable.  “it has been the practice of the Office to accept explanations that demonstrate that such use was inadvertent or without any intent to deceive or mislead and that there has been an effort to discontinue the offending use.” Knorr-Nahrmittel Aktiengesellschaft v. Havland International, Inc., 206 USPQ 827, 833 (TTAB 1980) citing S.C. Johnson & Son, Inc. v. Gold Seal Co., 90 USPQ 373 (Comm’r 1951). Mistake or inadvertence generally overcomes a claim of fraudulent misuse. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §19:146 (4^th ed. updated 2009).

Do you need help with your trademark, regardless of the registration status of the mark?  Contact us at Verna Law, P.C. at anthony@vernalaw.com or call 914-908-6757. We focus on intellectual property law, such as registered trademarks and unregistered trademarks, patents, copyrights.