A quick refresher on registered and unregistered trademarks for those with websites and mobile apps. Are you using the proper symbols with your marks?
Is your mark Registered with the USPTO?
The U.S. has a national Trademark registration process through the United States Patent and Trademark Office (“USPTO”). Registering a mark with the USPTO requires submitting a trademark application. Trademark examiners at the USPTO review the mark application and make sure that it complies with the requirements for receiving Trademark protection, such as that the mark is not descriptive and that the mark is not being used by other parties. Once approved, the mark will be published for opposition and issued thereafter (assuming no one files an opposition).
Registering your mark with the USPTO carries with it certain benefits, such as a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration. Having a registered mark is also helpful for cases under ICANN’s UDRP domain name squatting proceedings and when trying to get reassignment of a user name on services such as Twitter and Facebook. For app developers, registration is especially important because names of apps are frequently copied by developers in app stores. Having a registered trademark for an app name makes take-down claims to Apple and Google for trademark infringement much more likely to succeed.
While registering with the USPTO has significant benefits, it is not necessary to register your mark with the USPTO to receive some lesser trademark protection. Individual states have their own trademark laws that provide protection to marks that are not registered with the USPTO. Since each state’s laws are different, the protection afforded to such marks varies from state to state. There is no presumption of nationwide protection afforded to marks that are not registered with the USPTO. Generally, such unregistered marks only receive protection in geographic areas where the marks are being used.
So when to (R) and when to (TM) or (SM)?
The proper symbol to use depends on whether the trademark has been registered with the USPTO. To signify that a trademark is registered with the USPTO, and therefore afforded the benefits of such registration, the (R) symbol is used. It is important to note that while the Trademark application is pending at the USPTO, the (R) symbol may not be used. During this time, use of the (TM) or (SM) symbols is appropriate. The (TM) and (SM) symbols should be used when a mark has not been registered with the USPTO. The (TM) symbol is used for goods, while the SM symbol is used for service marks. Use of the (TM) and (SM) symbols signifies to other parties that the owner of the unregistered mark has a claim of ownership to that mark. It also warns such parties against unauthorized use of such marks.