It’s easy to understand why this is confusing for trademark users: all three symbols commonly appear beside word marks or logos. All three communicate to viewers that the person or company using them is claiming certain rights in their mark. But each symbol has a different meaning. Let’s start with the circle R symbol: ®.
When to use the ® symbol
Mark owners use the circle R symbol to give notice to the public that they have officially registered their mark with the U.S. Patent and Trademark Office. This has a deterrent effect. In practice, when people or companies who are brainstorming new ideas for marks find out that the mark they are considering is already being used with the circle R symbol (and has already been registered by someone else at the federal level), they will often back off and come up with a different idea for their own mark.
There are few key things you need to understand about how and when to use the circle R symbol. First, you can only use this if you already have a federal trademark registration. If you have filed an application with the USPTO to register your mark, but your application is still pending (meaning the mark has not yet registered), then you cannot use the circle R symbol yet.
Second, even if you’ve registered your mark at the state level (for example, your mark is registered on the trademark register maintained by the State of Georgia), you still cannot use the circle R symbol yet unless you also have a registration on the U.S. federal register.
Third, you can only use the circle R symbol on or in connection with the goods or services you identified in your registration. A registration is not a green light to use the mark on anything and everything you can imagine doing or selling. The rights you have under that registration are always tied to the particular goods/services identified in the application. For example, if your registration identifies hats and jackets, you can use the circle R symbol by your logo on the tags connected to those hats and jackets. But if you've just started selling purses, you cannot use the circle R symbol by your logo on the tags connected to your purses - not until you've secured a federal registration that covers use of the mark with purses.
Fourth, you cannot use the circle R symbol anymore if you let your trademark registration expire. You have to take certain steps to keep your federal trademark registration alive. If you fail to do that, you lose the right to use the circle R symbol on or in connection with the goods/services in your dead registration. (For more details on keeping federal trademark registrations alive, click here.)
Fifth, some foreign countries also use the circle R symbol to indicate that a mark has registered in their country. These include Belgium, China, Costa Rica, Denmark, Ecuador, Germany, Guatemala, Hungary, Luxembourg, the Netherlands, Nicaragua, Poland, and Sweden. But be careful: even if you have a trademark registration in one of these countries, you cannot use the circle R symbol on or in connection with your goods or services in the U.S. until you have a registration on the U.S. federal register.
When to use TM or SM
So what can you do if you haven’t applied to register your mark with the USPTO yet or if your application is still pending? Here’s where TM and SM come into play. Both of these can be used with marks that are not yet registered at the federal level. When you’re trying to figure out which one to use, the key difference here is what you’re using your mark with. You'll want to use TM with your mark if you're using that mark with goods and SM with your mark if you're using that mark with services. Here's why: TM stands for “trademark,” and this is the proper name for a mark that is used in connection with goods. SM stands for “service mark,” and this is the proper name for a mark that is used in connection with services. (This distinction is irrelevant after you get your federal trademark registration: you'll use the circle R symbol regardless of whether your mark is a trademark or a service mark.)
As a quick example: If you sell brownie mix, that’s a good. And the logo that appears on your brownie mix box is a trademark because it identifies the source of your brownie mix goods. If you’re a massage therapist, then you offer services to the public. And the logo that appears on the door to your wellness center is a service mark because it identifies the source of your massage therapy services. If you don’t have a U.S. federal trademark registration for your brownie mix logo, you can still use TM beside your logo to indicate that you are claiming trademark rights in that logo. If you don’t have a U.S. federal trademark registration for your wellness center logo, you can still use SM beside your logo to indicate that you are claiming service mark rights in that logo.
Understand that using TM or SM just puts others on notice about how you are using your mark - specifically, that you believe this wording or collection of design elements identifies the source of your goods/services. Using TM or SM does not entitle you to any of the benefits of a federal trademark registration.
Be very careful. If you submit an application to the USPTO that shows you are using the circle R symbol when you do not yet have the right to, the USPTO attorney examining your application will have to determine whether they think you did that by mistake or whether it was intentional fraud. If the ultimate determination is mistake, this may slow down the processing of your application and be one of the issues for you to address in a Refusal. But if the ultimate determination is fraud, the problem may be escalated to the Commissioner for Trademarks, and the consequences are much more severe. After reading this, you know better: don't use the circle R symbol until you have the right to.
By now, you’ll know I’m a big fan of flow charts. Here’s an easy way to keep the differences between these three symbols clear in your mind:
This information was posted on February 22, 2021 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.