“Intellectual property refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.”
— World Intellectual Property Organization
We most often associate the word “property” with physical possessions: our homes, vehicles, clothing, etc. However, intellectual property refers to the expression of an original idea.
Intellectual property is the basis of our economy. Copyrights, patents, and trademarks can become valuable assets as a company establishes its brand and distinguishes its products or services in the marketplace. Every facet of entertainment and industry - the exchange of goods and/or services - is conducted through the rights afforded as owners of intellectual property. This allows the owner exclusive rights to reproduce, distribute, sell, display, design, or identify.
Generally, once you create an original idea, you own it. In order to protect it, however, you need to register it. Before discussing the differences between the trademark symbols, we’ll first outline the three primary facets of intellectual property law:
Copyrights, Patents, & Trademarks: What’s the difference?
- Fixed “tangible” expression of an original work
- Applies to artistic or literary works including but not limited to sketches, drawings, cartoons, paintings, photographs, movies, tv shows, music, lyrics, sound effects, plays, operas, scripts, screenplays, novels, poems, essays, articles, speeches, and the like
- Provides exclusive right to exploit an original work of authorship (reproduce, distribute, sell, display, etc.)
- Common Law Copyright: exists immediately upon the creation of an original work
- Registered Copyright: provides protection by the U.S. Government; may not seek a claim of Copyright Infringement unless a work is registered
- Copyright Infringement: when someone takes your original work without your permission and does something with it (sell, copy, alter, etc.)
- Works created after 1978 last the lifetime of the author plus an additional 70 years
- Protect inventions and guarantee exclusive ownership for 20 years
- Must be the first person to apply for the patent; being the first to invent a product doesn’t count
- Utility Patent: protects how a design works
- Design Patent: protects how a design looks
- Patent Pending: submit a Provisional Application to hold your place in line for up to one year while you finalize your design and label your invention “Patent Pending”
- Communicate ownership of a logo, brand name, or tagline
- Prevent confusion between the goods and/or services of business with that of another
- ™ Symbol: unregistered trademark
- ® Symbol: registered trademark
- Trademark Infringement: unauthorized use of a trademark in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services
- Trademark registration is valid for 10 years with available 10-year extensions
- USPTO (United States Patent and Trademark Office) also requires affidavit of use between years 5-6 to claim the trademark is still in use; otherwise the trademark registration will be canceled
The Importance of Trademarks
A trademark identifies the origin of a good or service for a consumer. Trademarks are ubiquitous in our society, and many are household names: Nike, Google, Starbucks, Coca-Cola, Ford, Target, and so on. Simply reading these names evokes the color and image of the logos associated with the trademarks due to the power of the marketing efforts of these brands. In light of the value these marks provide, all of these companies fiercely protect their brands and property with trademarks.
Similarly, trademarks provide consumers with a sense of reliability and quality because they know the source of the goods or services, and those goods and services are tied through marketing using the trademark to ensure the consumer makes repeat purchases. All major advertising involves trademarks.
One advertisement can contain many trademarks owned by the same company. For instance, slogans can be registered as trademarks, such as Chick-Fil-A’s “Eat Mor Chikin”, which has been registered as a separate trademark from the Chick-Fil-A brand name, and even the specific calligraphy in Chick-Fil-A's logo design.
So, which trademark symbol should I use?
It depends on your business. Consider the differences between the trademark symbols below to determine which best suits your business.
™ Symbol (Unregistered Trademark)
- You claim a logo, brand name, or tagline as your own
- Available to use immediately
- Does not provide formal legal protection by the U.S. Government in the event of trademark infringement
- Does not require filing or payment to use
® Symbol (Registered Trademark)
- You claim the trademark is yours, and the government agrees
- Provides formal legal protection by the U.S. Government to use the logo, brand name, or tagline exclusively by your business in the event of trademark infringement
- Not required to use a ® beside a registered trademark
- Cannot use the ® beside an unregistered trademark
- Must file an application with USPTO and pay registration fees
What do these symbols mean?
Even with an understanding of the appropriate use of the ™ (unregistered trademark) and ® (registered trademark) symbols, their implementation is not always this straightforward.
What does the ® symbol mean when displayed beside a logo?
- Appropriately registered trademark in the country in which the business operates
- Appropriately registered trademark in another country
- The business does not have a registered trademark, fraudulently misleading the public, which may result in the USPTO refusing your brand for future trademark registration
- Formerly registered trademark with a dead (expired) registration
What does the ™ symbol mean when displayed beside a logo?
- Unregistered trademark that claims ownership
- Unregistered trademark in the process of registration or with future plans to register
- Placing a ™ on items in hopes of being perceived as more credible
- Appropriately registered trademark in the country in which the business owner operates
- Appropriately registered trademark in another country
For these reasons, we recommend hiring a professional trademark attorney to complete a comprehensive trademark search to ensure that there are no other businesses. They will be able to tell you with certainty whether or not you are able to claim or register a trademark as your own.
Michael A. Jacks, owner of Jacks Legal, is the trademark attorney whom we have used to register our trademark and recommend to our clients.
Ultimately, the inclusion of these symbols is optional. We believe much of the confusion surrounding trademark symbols stems from the fact that they are not required. The brands above that have chosen not to include these symbols in their trademark are operating on the assumption that the public acknowledges ownership. Of course, Nike owns their logo. Of course, the Google logo belongs to Google.
Trademarks that are registered retain the same legal protection with or without the use of the ® symbol alongside their trademark. There comes a point for many businesses where a brand is so well-known that these symbols can become unnecessary, even distracting. However, we believe that the owner of a startup business with a registered trademark should proudly display their ®. You’ve earned it. And hopefully one day, you won’t need it.
Registering a Trademark
Prior to naming a new business, or launching a new product, it is important to determine if your name, logo, slogan, or other identifying information, is protectable as a trademark. Attorneys can search records and databases of existing trademarks to determine if your mark conflicts with any registered trademark. The United States Patent and Trademark Office (USPTO) will reject any trademark if they believe that it would create a likelihood of confusion with a previously registered trademark. Hundreds of thousands of trademark applications are submitted to the USPTO every year, and many are denied.
Businesses can also register information that they have been using in commerce for a long time. Use over five years allows registration under a Section 2(d), acquired distinctiveness standard, which presumes that the business has created some good will and brand recognition, and allows for more generic trademarks to be registered successfully.
Additionally, trademarks may be rejected by the USPTO for a variety of reasons. Generic trademarks like “Donuts” or “Donut Store,” will be rejected. The best trademarks are arbitrary, meaning there is nothing associated with the meaning of the word or slogan outside of the connotation created by the trademark’s owner though the product. Common examples of arbitrary trademarks are words like Xerox and Exxon, which have no meaning outside their relationship to the business.
Trademarks that are not fully arbitrary may be described as suggestive, or descriptive, and the USPTO may allow registration of those trademarks, but generic terms can never be registered. For example, the word “whiskey” or the word “bourbon” cannot be registered by anyone, but by combining other unique terms with those words, a sufficiently distinctive trademark can be created and registered.
What to Expect From the USPTO
Most of an attorney’s work on registering a trademark should occur prior to filing, including researching potentially conflicting marks, determining the proper international classification categories for registration, and any applicable design codes for pictorial or combined trademarks. After filing, little will happen for several months. An attorney from the USPTO will be assigned a filing after about three months but may not correspond with the applicant for several months. If everything is successful, registration will not occur for at least nine months. It is not required to use an attorney to register a trademark with the USPTO, but it is recommended.
There are multiple layers of review by the USPTO of a new application. If the trademark is not immediately approved by the USPTO, the application can be amended, additional specimens provided, or appeals can occur through an administrative process and then the federal court. Additionally, if a company that owns a trademark believes that your trademark is infringing on their rights, they can intervene in the process and object to the approval of the trademark.
Most states allow a specific state registration of trademarks, but the common practice is to do a nationwide registration with the USPTO because of the ability of the internet to easily disseminate intellectual property nationwide. Very few businesses are limited to commerce in only one state.
Ultimately, while the inclusion of ™ and ® symbols is optional, we recommend that all businesses formally register their trademark to ensure that your business retains exclusive rights of ownership to your logo.
In today’s competitive marketplace, starting and sustaining a successful business is nothing short of a triumph. Anyone who has dedicated the time, resources, and attention to start a business and develop a professional logo design, should properly protect the trademarks.
If your trademark was worth creating, it’s worth protecting.
This blog post is provided for informational purposes only and does not constitute attorney-client communication, and does not create an attorney-client relationship. To the extent this is deemed to constitute an advertisement, the responsible attorney is Michael A. Jacks, who is licensed in West Virginia and Pennsylvania. Michael A. Jacks contributed to the drafting of this blog post.
— Michael A. Jacks