Trademark Titan™ Blog

Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

Trademark Titan™ Blog  - Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

Trademark Titan Blog’s Tuesday Tip: What Do the Symbols ®, TM and SM Mean and When Do You Use Them?

What Do the Symbols ®, TM and SM Mean and When Do You Use Them?

United States Marking

  • The trademark registration symbol ® may be used once a mark is R Logofederally registered and carries with it various legal rights (see list below).  This notice may only be used with federally registered marks. 
  • “TM” is used with trademarks that are not federally registered and for marks that designate products; an unregistered mark is treated as a “common law” mark, which is also a legally recognized trademark right within the geographic regions in which the mark is used.  
  • “SM” is used with marks that are not federally registered and for marks that designate services; an unregistered mark is treated as a “common law” mark, which is also a legally recognized trademark right within the geographic regions in which the mark is used.

International Marking Considerations 

  • Use of ®, TM and SM are country specific.  Use of ® in countries where the mark is not registered may be punishable by fine and even imprisonment.  Some countries may even impose penalties for using TM if the mark is not registered under the theory of false adverting if consumers would perceive such use and indication that the mark is federally registered when it is not. 

For more information about international trademark marking, see my blog post here

Advantages of Federal Trademark Registration

1.   The ® symbol can be used, signifying the company’s registered interest in the mark

2.   Registration adds value to the company’s intangible asset portfolio

3.   Registration acts as a notice to would-be third-party users of same or similar mark

4.   Registration is prima facie evidence that the registered mark is valid, the registrant owns the mark and has exclusive rights to use the mark in commerce

5.   After five years of continuous use in commerce, the mark becomes incontestable, which means that the registration cannot be attacked on descriptiveness or prior use

6.   A registrant may sue in federal court when diversity does not exist

7.   In a successful trademark infringement action, the registrant may obtain treble damages and reasonable attorneys’ fees

8.   The registrant may use the power of the federal government (via the U.S. Customs Service) to prevent the importation of goods that contain infringing marks

9.   One registration covers 50 states

10. Tactical advantages in domain name disputes

Trademark Application Denied Based on Likelihood of Confusion: What are “Confusingly Similar Trademarks?”

In the recent U.S. Trademark Trial and Appeal Board decision of In re Straight Up Southern, LLC, the Board once again sends a stinging message to a trademark applicant and upholds the Examining Attorney’s refusal to register the below depicted mark on the ground it is confusingly similar to the registered mark LILA GRACE: 

Lily Grace

Straight Up Southern sought registration of its mark for:

  • ‘short-sleeved or long-sleeved t-shirts; and tank tops,’ in International Class 25. 

The Examining Attorney refused registration under Section 2(d) of the Trademark Act on the ground Applicant’s mark is confusingly similar to the registered mark LILA GRACE for:

  • ‘bathrobes,’ in International Class 25.

In any likelihood of confusion analysis, the primary inquiry is whether consumers would be confused as to the source of the party’s respective goods. 

Common misconception clarified: The issue of “confusingly similar trademarks” is not whether consumers would mistakenly purchase a bathrobe when they intend to purchase a t-shirt; that is not the analysis for “consumer confusion.”  Rather, “consumer confusion” is based on whether consumers would reasonably believe that bathrobes and t-shirts would originate with the same source (i.e., Ralph Lauren brand of t-shirts and bathrobes).  

If consumers would make that reasonable assumption, and if the marks of the parties are similar in terms of sight, sound, meaning and/or connotation (i.e., LILY GRACE vs. LILA GRACE), then we have a potentially serious issue of consumer confusion as to the source of the goods and possible trademark infringement, which may subject the junior user to liability and rebranding.  

Another example of “What are Confusingly Similar Trademarks?” Would consumers reasonably believe that running shoes and running pants originate with the same source?  Of course, they would.  I am quite certain that during the early years of Nike that Nike would not have permitted another party to sell Nikey™ brand of running pants – or any athletic wear – on the basis consumers would be confused as to the source of the parties’ respective goods. 

It is the protection of consumers from being confused or deceived as to the source of goods and services that is the crux of trademark law.  Trademark law’s primary concern is not the trademark owner… it’s protecting consumers, period.

Therefore, when brand owners adopt names that are similar to registered trademarks (i.e., Ovation vs. Avasion) for related products (i.e., skin lotions vs. hair shampoo), there is a high probability that the registered mark will block an application for the new comer’s similar mark on the basis of likelihood of confusion as to the source of the goods.  

Important note: Unregistered, a/k/a common law, marks must also be considered because they may still present barriers to the use and registration of a new comer’s mark and may be used by their owners to block a new mark’s trademark application.  For that reason, searching the U.S. Patent and Trademark Office (“USPTO”) database alone is not enough.

Turning back to the LILY GRACE case, the Board correctly identified the primary principles for refusing registration of Applicant’s mark, including that:

  • when determining whether marks are confusingly similar, the test is not a side-by-side comparison, rather the test is based on the average recollection of marks by consumers;
  • because the registered mark was registered in standard character form, the registered mark is protected in all formats, including the stylization of Applicant’s mark; 
  • although Applicant’s mark contains a design element, the added design is not enough to avoid consumer confusion because consumers call for goods by the word portion of marks;
  • there is no correct pronunciation of a mark and consumers may pronounce a mark differently than intended by the brand owner; 
  • the marks of the parties convey connotations of female names (LILY GRACE vs. LILA GRACE) – thus they convey the same connotations;
  • all of the parties’ respective goods are common apparel and relatively informal and would travel in the same channels of trade; and
  • the Examiner’s introduction of third party online store webpages evidence that it’s common for the same parties to sell all of the parties’ goods under the same trademark.

Some Key Take-A-Ways

  • The parties’ marks and goods/services need not be identical to find trademark infringement
  • Trademark searches must consider “confusingly similar trademarks” and relatedness of products
  • The issue is whether consumers would be confused as to the source of the products – not whether they mistakenly purchase the wrong product (I purchased beer by mistake… I meant to purchase wine!)

USPTO Trademark Search Challenge

Search the USPTO database using the below sample search queries for Applicant’s mark LILY GRACE and see if they find the cited mark LILA GRACE and, more importantly, would have found it on the USPTO database prior to the LILY GRACE name launch and filing (it was already there…).

Click here to access the USPTO search page and then:

  • Scroll down and click: ‘Trademark Electronic Search System (TESS)’
  • Click:Word and/or Design Mark Search (Free Form)
  • Copy and paste each search strategy (one search at a time) in the search window, hit “Submit Query” and then review the results

*lily*[bi,ti] and *grace*[bi,ti] and 025[ic]

*l{“iy”}l*[bi,ti] and *gra{“sc”}*[bi,ti] and 025[ic]

How did they do?  

Podcast Episode 2: How are International Trademark Rights Created? Ensuring a Smooth Global Brand Launch

This episode summarizes the ways in which trademark rights are created internationally, which addresses the following:

  • Many brand owners fail to recognize that the trademark rights they have created in the United States, and possibly elsewhere, do not extend automatically into other countries, which can result in infringing third party rights, being sued for trademark infringement, seizure of products at Customs and costly rebranding exercises
  • Brand owners must understand how trademark rights are created internationally and then create strategic business plans setting forth a course that seeks to minimize risks and costs, while maximizing brand rights and protection
  • Failure to secure trademark registration protection typically means that a company does not own any trademark rights – or think of it as a “government-issued business license” – to sell branded products in the majority of countries
  • Brand owners that fail to implement a coherent and consistent global filing trademark strategy will likely find that they have failed to maximize brand protection, possess inadequate trademark protection and rights for key brands and products in key markets, have not minimized business and infringement risks, have lost rights in key markets and consistently run over budget

Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.”  

Music: “The Returning” by Jelsonic (www.jelsonic.com)

The music is licensed under creative commons attribution license available on the Free Music Archive.

Trademark Titan Blog Podcast 1: Securing Chinese Trademark Registration and Chinese Trademark Rights; Battling Trademark Piracy

This podcast summarizes securing Chinese trademark registration and Chinese trademark rights, including the following:
  • Overview of Chinese trademark registration system and scope of protection
  • Best practices for securing trademark registration protection in China
  • Best practices for preventing loss of trademark rights in China
  • Best practices for battling trademark piracy in China
Music: “The Returning” by Jelsonic (www.jelsonic.com). The music is licensed under creative commons attribution license available on the Free Music Archive.

Chinese Trademark Rights and Battling Trademark Pirates

Unlike the United States, which is a “first to use” trademark system, many countries, including China, follow a “first to file” trademark system.  Meaning whoever files a Chinese trademark application first for a particular trademark and goods/services, which ultimately matures into a trademark registration, is generally considered the legal owner of the registered mark – even if that party had never used the mark in China (or elsewhere).  An exception to that rule is if the subject mark is well-known or famous in China; a standard most trademarks cannot satisfy.  For that reason, securing trademark registration in China is highly recommended.

IMG_2012Many cases of third parties registering a company’s trademark in China are the result of trademark pirates, those parties seeking to hold the trademarks of others for ransom and, in some cases, third parties planning to actually sell product under the company’s mark.

Even if a company secures Chinese trademark registrations for its relevant marks and goods, the company may still be vulnerable to piracy if it has not adequately protected all categories of goods in a certain international class or category.     

Unlike the U.S., for example, the Chinese registration system not only categorizes goods and services in certain international classes (e.g., Class 3 covers cosmetics, Class 12 covers various automotive products and Class 25 covers clothing), China further categorizes goods and services into subclasses (think of it as “buckets” of different but potentially related products). For example, International Class 12 covers 12 different subclasses of goods.  Should brand owners register their marks for automotive products A, B, C and D and should those goods fall within only 2 of the 12 subclasses, these brand owners are vulnerable to pirates (and competitors) who may register their marks in the “open” subclasses potentially causing consumer confusion in the marketplace and certainly causing senior management trepidation.

Failure to properly protect your trademarks in China can result in loss of rights, loss of market opportunity and/or many years of costly litigation (4-6+ years) over trademark rights. 

Best practices for securing and enforcing trademark rights in China, and seeking to reduce overall future enforcement actions and costs, include the following:

  • Audit your trademark portfolio for gaps in protection
  • Conduct trademark searches in all classes and subclasses relevant to your business for any barriers to registration based upon third party filings
  • Register marks in all available sub-classes, even if the marks are not used for many of the covered goods, to prevent future piracy.  Such strategy also preserves rights for future product expansion and licensing (revenue) opportunities.
  • Register marks even if 100% of Chinese manufactured products are produced for export, as the registrations permit authorized “use” of marks for manufacture and should avoid pirates from seizing products at customs based upon registering the company’s marks
  • File oppositions and cancellations, as necessary, and/or seek purchase of third party filings, to clear out pirates
  • Register your brand names early in English, Chinese phonetics and Chinese characters
  • Identify products you sell now and which products you plan to sell in 2-5+ years
  • Identify economic zones within which company has focused on growth and where majority of sales are derived, which will assist with prioritizing spend concerning trademark infringements and counterfeits
  • Set up a trademark watch service and surveillance program
  • Secure and gather evidence of use of trademarks for use in enforcement actions

Trademark theft and piracy is an industry in China.  Even with the new laws enacted in 2014 to assist Western companies against trademark theft, trademark piracy is, simply put, “running rampant.”  

Companies that ignore China and their Chinese trademark rights for whatever reason, perhaps they don’t have plans to move there any time soon, should still be thinking about the future prospect of Chinese business and seek to secure their rights today… before pirates do it for them…