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: Trademark Application Specimens of Use: What is an Acceptable Specimen of Use?

Trademark Application Specimens of Use: What is an Acceptable Specimen of Use?

  • For Goods:  In general, an acceptable specimen must show use of the mark affixed to the goods themselves or the packaging for the goods (i.e., labels, tags).  Alternative uses may also be acceptable, such as use of the mark on instruction manuals or product information inserts that travel with the goods and on point of sale displays.  (Stay tuned for an upcoming post on “point of sale displays.”)   
    • It is extremely important to understand that a mark is not considered to be “in use” for trademark application and ICregistration purposes until the goods have been transported in interstate commerce bearing the mark in the ordinary course of trade.  Simply advertising the goods or offering them for sale is not sufficient. 
  • For Services:  In general, an acceptable specimen includes advertising brochures, flyers, and web pages that show use of the mark in connection with the services.  The test employed by the U.S. Patent and Trademark Office is whether the specimen shows use of the mark in a manner that would be perceived by purchasers as identifying the applicant’s services and indicating their source.  For example, a specimen that only shows use of the mark, with no reference to the services, does not support service mark use.  
    • It is extremely important to understand that a mark is not considered to be “in use” for trademark application and registration purposes until the services have been promoted under the mark and the services have been rendered to third parties in the ordinary course of trade.  Simply advertising the services in any manner absent the rendering of those services does not meet the statutory requirement of use.  Furthermore, one must render the services in interstate commerce before a mark can register. 

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

U.S. and International Trademark Marking: Use TM, SM, ®…or None of the Above?

Trademark marking generally refers to the use of the trademark designations “TM,” “SM” and ®, which are commonly accepted designations for identifying trademarks and indicating their ownership.

When brand owners use their trademarks within the U.S. – the issue of whether to use the trademark symbols TM, SM or ® is relatively straightforward.  The general rule is to use the designation “TM” for (federally) unregistered trademarks for products (Trademark™) and “SM” for (federally) unregistered marks for services.  Once a trademark registers with the United States Patent and Trademark Office (“USPTO”), however, the TM or SM may be replaced with the coveted “R in a circle” — ®.  Once trademarks register with the USPTO and brand owners begin using the registration symbol “®” next to their marks on packaging, product sheets and/or marketing materials, what should brand owners do with respect to using the “®” symbol in countries where their marks are not registered?

When U.S. registered trademarks are used in countries where the marks are not registered, the issue of trademark marking can be complicated, since many countries have their own trademark marking laws.  Understanding local laws and legal issues that may arise with respect to trademark marking is a first step to understanding and minimizing the potential risks of violating certain country laws and requirements. It seems clear that most countries recognize the trademark registration symbol ® – and common law trademark symbols SM and TM – in practice.  Their use, however, are typically optional and/or have no recognized legal effect as to protection of trademark rights in some countries. 

Although the ® symbol has become well-recognized, it is by no means universally accepted.  For instance, “Marque Deposee” is preferred in some French language territories and “Marca Registrada” or “M.R.” is preferred in certain Spanish or Portuguese speaking territories. Certain country laws including, China, Chile, Costa Rica and Indonesia, require the use of proper registration notice in order to maintain a registration and trademark rights.  Furthermore, other countries, including the United States, Bolivia, Denmark, Philippines, and European Union, require proper use of the registration symbol ® to recover damages and attorneys’ fees for willful infringement, while some other countries require proper use to protect against loss of trademark rights (such as the mark becoming generic).

However, some local laws make it unlawful to claim trademark registration status when a mark is not registered in that country.  Countries, including Germany, China, Ireland, Italy, New Zealand, Pakistan and Peru, may actually impose penalties for mismarking of trademarks, such as fines, damages, injunctions and/or imprisonment. There are also a few countries that may impose penalties for use of the symbols “TM” and/or “SM” if consumers would perceive use of those designations as an indication that the mark is actually “registered” in that country; France appears to be one of those countries.

The dilemma for brand owners that have registered their marks in only some of the countries in which they conduct business is that in order to conform to local trademark marking law requirements, they may need to develop tailored marketing and packaging materials to avoid violating those laws.  The main problems associated with such tailoring of marketing and packaging materials are – of course – costs and time. Based upon the differences in local trademark laws, developing a “one-size fits all” trademark marking strategy is likely to prove difficult, as one strategy might violate – to a certain extent  – certain local laws or result in loss of certain trademark rights against an infringer, while others may not.  Adopting a global trademark marking strategy that is not tailored to each specific jurisdiction, however, should be one that seeks to minimize potential risks. 

Although it is preferable for brand owners to tailor their trademark marking policies to conform to local law requirements, for most companies, however, business realities, such as cost and time, result in the implementation of strategies designed to minimize cost, time and risk.

For discussion about the benefits of securing U.S. federal trademark registration and about global trademark protection considerations, please review my blog posts herehere and here.