Though companies often place a high value on protecting their trademarks, some may be missing out on the opportunity to put others on notice of their rights by way of trademark symbols.
For in-house attorneys, proper use of these symbols may not only stave off potential infringers, but in some cases, may also protect the ability to collect damages in an infringement suit.
There are three commonly used trademark symbols: "TM" represents unregistered marks for goods; "SM" represents unregistered marks for services; and a circled "R" is the federal registration symbol that represents a mark that has been registered with the U.S. Patent and Trademark Office.
Use of the symbols may serve as a deterrent for would-be infringers, said Josh Gerben, principal at Gerben Law Firm. "Most of the time, you get this self-policing mechanism out of using the trademark symbols," he said. "They will typically steer people away from using those trademarks when they know it's the property of someone else."
Gerben likened use of the symbols to putting on a seat belt. "You put it on every time because you hope if something happens, you have the protection you need," he said. "Is it a 100 percent required to protect the marks? No … but it just adds more cards in your favor."
What's more, when it comes to federally registered marks, if a trademark registrant fails to provide proper statutory notice of registration, this will preclude a company from recovering lost profits or money damages in a trademark infringement suit, said Kelley Keller, an associate at Sterne, Kessler, Goldstein & Fox. Proper notice includes actual notice, using the text "Registered in U.S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." or placing the encircled "R" next to the mark, she said, pointing to a specific section of federal trademark law.
"Failure to use [the symbol], I think, can be detrimental in an enforcement proceeding … because it can impact your ability to collect damages," Keller said. "If you have a registered mark and use the circle R, then you don't have to do anything else to prove that the defendant knew, or should have known, your mark was registered prior to the infringing use."
As for how these symbols should be used in practice, Keller said when a mark appears in a press release or in other marketing materials, "as a general rule, I think it makes sense to use it just once in a conspicuous place." She added: "I think it's important that marketing should be consulting with legal all along the way … because legal wants to make sure [a company] has a strong trademark right and it's protected under the law."
But not everyone is in full support of using trademark symbols. Nonlawyers involved in a branding strategy, such as marketing and press relations teams, don't often like the use of symbols because it can clutter up copy or interrupt the flow of a press release, said Lois Duquette, of counsel at McNees Wallace & Nurick who was formerly associate general counsel of global intellectual property and regulatory at The Hershey Co. She said that some marketers "really don't like what it does to the look" of material so using the marks comes down to balancing legal considerations with concerns of others involved.
And use of symbols can create a "logistical nightmare" for a company operating internationally, Duquette said, because while it may be appropriate to use the circle R symbol in the U.S., the same may not be true in foreign jurisdiction. Some countries may bring administrative actions for improper use of the symbol, she noted.
"It's not fatal to not use the symbol all of the time," Duquette said. "But the one big benefit if you put [a symbol] on your package or in a press release, is it communicates to the world that this is being used as a trademark."
Contact Jennifer Williams-Alvarez at firstname.lastname@example.org.