Trademark Symbols – The Difference Between the ™ and ® Symbols and When Is A Trademark Owner Permitted Use of The Symbols

by | Jun 4, 2013 | Intellectual Property, Trademarks, Uncategorized

Trademark Symbols – The Difference Between the ™ and ® Symbols and When Is A Trademark Owner Permitted Use of The Symbols 

A common question among trademark owners is what’s the difference between the ™ symbol and the ® symbol and when can I use them on my trademarks.  It is also a common misconception that you have to obtain a federal trademark registration on your trademark before you can use the ™ symbol.  That is not the case.

You may use the ™ symbol on a trademark even though the trademark is not registered (or even applied for). Thus, whether you have a trademark application pending at the United States Patent and Trademark Office, but it has not reached registration yet, or you have yet to file a trademark application, you may use the ™ symbol on your trademark.  The ™ symbol is notice to others that you are using a word, phrase or logo as a trademark.  It also potentially wards off third parties from using the same or similar mark.  Thus, once you begin using a trademark on a good or service you are providing, you may use the ™ symbol on the mark (or the ℠ symbol if you prefer to distinguish a service mark although ™ may be used on trademarks used in connection with goods or services).  Note – although this is a whole new topic for another article, you should make sure that another party is not already using the same or similar trademark in the same, similar or related area before you begin using the trademark.

As for the ® symbol, you may use that once the U.S. Patent and Trademark office issues a registration for your trademark.  You should not to use the ® symbol on your trademark prior to obtaining a federal registration – such use is considered a misrepresentation to the public that you have a federally registered mark.  Upon registration, you may (and should) use the ® symbol on the trademark.

This ® symbol provides notice to others that you have a federal registration. It is important to note that the failure to include the ® symbol can potentially result in a limitation in damages that you would have been entitled to in a trademark infringement action as your damages could potentially run later. Thus, it is beneficial to include the ® registration symbol once the U.S. Patent & Trademark Office issues the registration to you.

For additional information, please contact Kim Grimsley at kim@olivergrimsley.com.

More countries join Madrid Protocol – Next Up India

by | May 3, 2013 | Intellectual Property, International, Trademarks, Uncategorized

More Countries Join the Madrid Protocol – Next Up: India

Effective July 8, 2013, India will join the Madrid Protocol – the international registration trademark system.  This is on the heels of Colombia, Mexico, New Zealand and Philippines, which have all joined the Madrid Protocol within the past 12 months.

The Madrid Protocol is one of the two treatises of the Madrid System (or the International Trademark System), which allows a trademark owner to seek international registration with one filing.  Businesses are growing worldwide today and as such, more and more businesses are finding they need international protection.  Under the Madrid Protocol, international registration is a more simplistic and cost-effective means of providing trademark owners with the ability to obtain trademark protection in up to 90 designated countries with only one trademark application filing. Registration under the Madrid Protocol is beneficial from a management standpoint as well as the international trademark registration can be managed more easily since only one step will serve to record any changes in the trademark registration, such as a change in ownership or even the address of the owner.

Thus, if your company wants to obtain trademark protection in fifteen15 countries, rather than having to file, pay for and manage 15 trademark filings in various countries, a trademark owner can obtain trademark protection in 15 countries with simply one application filing.  Not only is this cost effective in filing fees, but also it is also cost-effective in the time spent in preparing and filing the trademark application.  Although filing under Madrid Protocol is beneficial to all trademark owners no matter how small or large the company may be, smaller businesses that once thought international trademark protection was just not feasible from a cost perspective can now realistically move toward international trademark registration and protection on a global basis under the Madrid Protocol.

For more information, please contact Kim Grimsley at kim@olivergrimsley.com.