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What Should I Use on My Trademark: ®, TM or SM?

Your company has a trademark, but what do you know about it? Does your company use one of these symbols with its trademark: ®, TM and SM? Are they required? Does it matter?trademark1

What is a Trademark?
A trademark is a word, name, phrase, symbol, color, scent or sound used to identify particular goods or services as coming from a particular source. Unlike domain names, you have no rights to a trademark until you actually use the trademark in commerce. “Naked” trademarks, which are not used in association with the sale of any good or service, are not allowed. Trademarks are also limited to a particular good or service. One company may own “Apple” for computers and another company may own “Apple” for records. As long as there is no likelihood that consumers may be confused that the goods come from the same source, identical trademarks can coexist for different types of goods or services.

Trademark Registration
Simply using a unique, non-descriptive trademark in association with a good or service is all you need to obtain common law rights to that trademark. With common law trademark rights, you can stop an infringer in your market area and obtain damages associated with the infringement. But you cannot get punitive damages or attorney fees. State trademark registrations extend common law rights to the borders of the state, but that is about it. As state registration typically afford little more protection than common law rights, most companies seeking trademark registration opt for federal trademark registration.

Federal Registration
Federal trademark registration is much harder to obtain, and more expensive than state trademark registration. A federal trademark registration may cost $1,200+ and take 18 months or more to obtain. Once you obtain your federal registration, you can use that registration to pursue infringers in any state, regardless of whether you are currently marketing in that state. In addition, if you can show the infringement was “willful,” federal trademark registration allows you to collect triple damages and attorney fees.

® refers to a federally registered trademark. Alternatively, you may use “Registered, U.S. Patent and Trademark Office” or “Reg U.S. Pat. TM Off.” to designate your federal registration. You may not use (R). Failure to properly mark your goods or services, limits your ability to collect profits or damages from an infringer who had no notice of your registration.

TM and SM
TM refers to a state or common law trademark, typically associated with goods and SM refers to a state or common law service mark, typically associated with services. Anyone can use TM or SM. There is no registration required. TM and SM simply mean the user thinks they have a defensible trademark, and may or may not pursue you for infringing it. One thing to consider. If they did not have the $1,200 to pursue a federal trademark registration, how likely is it that they will pay the cost of a lawsuit, especially with no chance of recovering attorney fees. Watch out though. They may just be using TM or SM while their federal trademark registration is pending.

Why Get a Federal Trademark Registration?
Only a federal trademark registration holder can use ®. Use by anyone else, even someone who has merely filed an application, but not yet received the federal registration may be subject to a lawsuit for fraud and false advertising. Additionally, using the ® without a federal registration in hand may prevent you from ever getting a federal registration. Federal trademark registration allows you to recover your attorney fees and up to three times your actual damages if the infringer was “willfully” infringing your trademark. This means the infringer may be liable for ten times or more the actual damage caused. As you might imagine, the ® serves as a pretty aggressive warning to infringers. The best part about the ®, is that it dissuades most would-be infringers without you ever having to lift a finger.

Brett Trout

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