When May My Product Bear the Trademark Registration Symbol?


We are all familiar with the R-in-a-circle trademark registration symbol. You know, this one here: ®.

We’ve also often seen a TM symbol used in advertisements or on websites alongside a business or product name or logo.

What’s the difference? When are you entitled to use the R-in-a-circle symbol with your business or product name, slogan, or logo?

Let’s talk about the difference between these two “trademark registration” symbols first.

The ® Versus the TM Trademark Registration Symbols: What’s the Difference?

The difference between these two trademark registration symbols could not be more simple: one can only be used when you have fully registered a trademark with the US Patent and Trademark Office (USPTO) for your exclusive use.

Which is which?

The ® Trademark Registration Symbol Explained

The ® trademark registration symbol indicates that you have registered the trademark with the USPTO. It is not only a signifier of an actual legal status, it may further only be used legally when you have registered the trademark at the Federal level.

Further, use of the ® symbol prior to registration of the trademark can result in the rejection of an eventual trademark registration application that you might file for that mark.

When filing an application for Federal trademark registration, you must include evidence of your trademark’s use in commerce (i.e., use with regard to sales across state lines). This will include a “Specimen” which be a photo of your actual product packaging or labeling, screenshots of your website, or other such evidence.

If the USPTO Examiner spots the ® symbol in that Specimen—this is problematic for your registration. It is unlawful use of the ® symbol.

This trademark registration symbol should not be used in your trademark registration application, therefore. Until the application process is fully complete, your trademark is not “registered.”

Once it is, however, the purpose of the ® trademark registration symbol is to provide a public notice of your trademark’s registration, in fact. It is “fair warning” to any who might consider using the same mark in relation to the sale of their product or service that only you can do so.

The TM and  SM Trademark Registration Symbol Explained

So does the TM have any meaning at all? How about the similar SM symbol?

First of all, TM indicates a “trademark,” or the use of a name, word, or logo in relation to the sale of a product.

The SM indicates a “service mark,” the use of a name, word, or logo in relation to the sale of a service. (For example, our Firm’s trademark registration legal service.)

That said, the use of these symbols do not mean that you have a registered trademark.

Some trademark lawyers may be of the opinion that they don’t mean anything at all. That is, these trademark registration symbols lack any “legal weight” because they do not signify a registered trademark.

In other words, you can’t sue someone for infringement if you lack a registered trademark. If you had one, you’d be using the ® trademark registration symbol and not the TM or the SM.

You must have registered your trademark with the USPTO in order to sue for infringement. This is what trademark attorneys mean when they say that these “interim” trademark registration symbols lack legal weight.

However, there is an alternative view that the TM or the SM symbols indicate at least your claim to “common law” trademark rights. That is, your right to the use of the trademark based on the length of time that you have been using it in interstate commerce.

Under US “common law” (non-statutory law), the party with the lengthier use in commerce is entitled to that trademark’s use.

It can also mean that you intend to file a Federal trademark registration application, or that you have and that the application simply remains pending. (It takes about a year from filing to registration given the USPTO’s Examination backlog, as of this writing.)

Thus, the use of these trademark “registration” symbols can be viewed as another, perhaps softer “warning shot.”

They can say to a potential infringer, “I may not have yet fully registered this trademark, but I have the right to do so—and I intend to do just that.”

What Is the Trademark Registration Process?

To obtain the legal right to use the ® trademark registration symbol, you must properly register your trademark at the Federal level.

This means, first, ensuring, that your trademark is free and clear for your use. You may have been using it already in trade in Detroit, elsewhere in Michigan, or anywhere else—but has somebody else been using the same trademark on the other side of the country?

  1. Retaining an Experienced Michigan Trademark Attorney

Retaining a Michigan trademark lawyer to assist you with your trademark registration application is the first step you should take in the process.

  1. Running a Professional Trademark Clearance Search

The first thing that a trademark attorney will do is to run full, professional “clearance search” of your proposed trademark.

This includes an expert review of not only the USPTO Principal and Supplemental Trademark Registers but also:

  • The trademark registers of all 50 states;
  • Business entity registrations in all 50 states;
  • Domain name registrations;
  • Web search results;
  • Social media search results;
  • And more.

At Noble Path Trademark Law, we provide you our search report, next, along with a Legal Opinion Letter predicting your odds of success or failure if you elect to proceed with your trademark registration application, bearing the clearance search result in mind.

  1. Drafting and Filing Your Trademark Registration Application

If you do proceed, our Michigan trademark lawyer will draft and file your application with your full review and signature, ensuring that no “silly mistakes” trip up your registration later on.

As of this writing, the USPTO is taking approximately 8 months to review new trademark registration applications.

Once the USPTO does, however, finally assign an attorney known as an “Examiner” to your file, he or she will review it and will then either approve it to move on in the trademark registration process—or will refuse it.

  1. Responding to USPTO Office Actions

USPTO Examiner refusals are known as “Office Actions.”

Office Actions are of 2 varieties: “substantive” and “administrative.”

“Administrative” Office Actions are those “foolish mistake” sorts: a product description that needs slight revision, a common usage word in your trademark that the Examiner wants you to disclaim (though this is worth arguing about on occasion), etcetera.

“Substantive” Office Actions are those which require an expert hand. These are arguments that your trademark cannot be registered because it is “merely descriptive,” “likely to confuse consumers,” includes geographic or other non-registrable terms.

Your trademark attorney will need to draft and file what amounts to the sort of legal brief filed in any Federal civil litigation, including legal search, citing case-law and statutory provisions, researching real-world evidence of use by you and the cited conflicted marks, and more.

It is unlikely that you will overcome a substantive Office Action without the assistance of a good trademark attorney. (However, you certainly have the right to try!)

  1. Entering and Exiting the Publication Phase

If you fail to overcome any Office Action refusal, your trademark registration application will be dismissed and you will not be entitled to use the ® trademark registration symbol.

If this happens, you will need to discuss with your Metro Detroit trademark attorney your options for a request for reconsideration or an appeal to the Trademark Trial and Appellate Board (TTAB).

If you do overcome all refusals, your trademark registration application will move on to the so-called “Publication Phase.”

This part of the process is a 30-day period of time in which 3rd party trademark owners or other parties with interest can file “Oppositions” seeking to have your application Abandoned. Third parties cannot oppose your registration for no reason at all, however. They must have an actual interest or be likely to suffer some alleged harm if your registration proceeds.

If you receive an Opposition, you are in litigation. You need a trademark lawyer on your side immediately.

  1. Registration or Notice of Approval

Once the publication phase has passed without (successful or any) opposition, your application will be Approved for Registration if you filed an “in-use” trademark registration application.

“In-use” means that you were using your trademark in interstate commerce on the date that you file your application.

You’ll receive your certificate of registration (in PDF form only, as of March, 2022) from your trademark attorney as soon as it is issued (usually about 11 weeks after the Approval is noticed out.

If you filed an “intent-to-use” application, meaning that you were not yet using the trademark in commerce when you filed, you will receive, instead, a Notice of Approval.

This Notice is your warning that you will have 6 months from that issue date to file a “Statement of Use” with a Specimen evidencing your use in commerce of the trademark, or your application will be abandoned.

Once your trademark attorney does file your Statement of Use (you can extend this deadline 5 times), your registration will be approved.

Once this occurs, in either case, you can begin using the ® trademark registration symbol in your marketing and branding efforts.

  1. Maintenance and Renewal of Your Trademark Registration

Once your trademark is registered, you can continue to use that trademark registration symbol for the life of its use.

However, you must continually maintain and renew your trademark with the USPTO, continually demonstrating its ongoing use in commerce to keep your trademark “alive.”

New Statements of Use with Specimens evidencing that ongoing use (and use in connection with the products or services on your original registration certificate, as opposed to different or new services) must be filed every so often.

Your first Declaration of Use must be filed between the 5th and 6th years after your registration, and every 10 years after that.

So long as you do so, you may continue to use that ® trademark registration symbol.

Why Hire a Michigan Trademark Attorney?

You hire a trademark attorney to ensure that your chances of protecting the brand that gives your business its value are fully maximized.

You retain a trademark lawyer to ensure that you are indeed able to use the ® trademark registration symbol that will ward off potential infringers and make your legal case for you—every time anyone looks at it.

Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting individuals, entrepreneurs, artists, musicians, start-ups, and enterprises of scale in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.

We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.

Click the “Register Your Trademark” button below to schedule your initial consultation and to begin your brand protection journey.