This is the sixth in a series of introductory articles on the topic of trademark law. In our earlier articles, we covered the definition of a trademark, how to select a strong trademark, and conducting trademark searches in connection with clearing usage of a selected trademark.
Proper usage of a trademark is essential to maintaining the company’s exclusive ownership of the mark in the United States. Therefore, once the company has obtained clearance of the mark from its trademark counsel, the company will likely want to make an application for federal trademark registration of the mark.
Until the time that the federal trademark registration is received, many companies will use the SM or TM symbol with the mark. SM stands for "service mark" and TM for "trademark." Typically, one of these symbols will appear on the shoulder or foot of the last letter of the mark. For example: ABC DENTAL SCHOOLSM. Although including the SM or TM symbol with the mark is not required under U.S. trademark law, such use notifies the public that the company is claiming exclusive ownership of the mark. Also, use of the SM or TM symbol serves as an excellent deterrent to those who might be considering infringing the mark.
Once the U.S. Patent and Trademark Office has issued a Certificate of Registration for the mark, the ® symbol is used with the mark instead of the SM or TM symbol. Use of the ® symbol in the U.S. signifies the mark is registered with the USPTO. In lieu of or in addition to the ® symbol, the company could use one of the following legends, both of which are prescribed by U.S. trademark law: "Registered in U.S. Patent and Trademark Office" or "Reg. U.S. Pat. & TM Off." The ® symbol and/or such legends are included when the registered mark is being used in connection with the goods and/or services stated in the Certificate of Registration. While displaying the ® symbol or a legend is not mandatory under U.S. trademark law, the company will likely want to use one or more of these indicators. Failure to do so will prevent the company from recovering profits and damages in an infringement litigation unless and until the infringer has actual notice of the registration.
This article does not constitute legal or other professional advice or services by JORDEN BURT LLP and/or its attorneys.
JORDEN BURT LLP is a law firm with a unique focus on financial services and a national reputation in high stakes litigation, financial regulation and product counseling.
