Use of the TM and SM symbols may be governed by local, state, or foreign laws and the laws of a pertinent jurisdiction to identify the marks that a party claims rights to. The federal registration symbol, the R enclosed within a circle, may be used once the mark is actually registered in the USPTO. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered.
The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration.
PLEASE NOTE: Several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.
Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.
Trademarks are registered with the United States Patent and Trademark Office (USPTO).
Federal trademark registration has several benefits:
- Constructive notice nationwide of the trademark owner’s claim.
- Evidence of ownership of the trademark
- Jurisdiction of federal courts may be invoked.
- Registration can be used as a basis for obtaining registration in foreign countries.
- Registration may be filed with the Customs and Border Protection (CBP) to prevent importation of infringing foreign goods.
There are times when you may desire a combination of copyright, patent, and trademark protection for your work. You should consult an attorney to determine what forms of intellectual property protection are best suited to your needs.
The registration is valid as long as you timely file all post registration maintenance documents. You must file a “Declaration of Use under Section 8” between the fifth and sixth year following registration. In addition, you must file a combined “Declaration of Use and Application for Renewal under Sections 8 and 9” between the ninth and tenth year after registration, and every 10 years thereafter. If these documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated. For more information read about keeping your registration alive.
No. The examining attorney will review the application and may issue refusals based on the Trademark Act of 1946, 15 U.S.C. §1051 et seq., or the Trademark Rules of Practice, 37 C.F.R. Part 2.
The most common reasons for refusing registration are because the mark is:
- Likely to cause confusion with a mark in a registration or prior application;
- Descriptive for the goods/services;
- A geographic term;
- A surname;
- Ornamental as applied to the goods.
The examining attorney may also issue requirements concerning, for example:
- The goods and services listed in the application;
- The description of the mark;
- The quality of the drawing;
- The specimens
There are no specific requirements on where the “Ⓡ” symbol should be placed relative to the mark, but most businesses use the symbol in the upper right corner of the mark. The “Ⓡ” symbol indicates that you have federally registered your trademark with the United States Patent and Trademark Office. It puts the public on notice that your mark is registered and that you have nationwide rights in it. You may only use the registration symbol with the mark on or in connection with the goods/services listed in the federal trademark registration and while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires). Note: Because several foreign countries use “Ⓡ” to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.
There are three important restrictions on use of the “Ⓡ” symbol: (1) it may only be used after the mark is registered (you may not use it during the application process); (2) it may only be used on or in connection with the goods and services listed in the federal registration; and (3) it may only be used while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires). Note: Because several foreign countries use “Ⓡ” to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.
Yes. A registered mark may be assigned and a mark for which an application to register has been filed may be assignable. Certain exceptions exist concerning the assignment of Intent-to-Use applications. Assignments may be recorded for a fee.
There is no obligation to register a trademark. It is absolutely possible to use a trademark even if it is not registered (as long as this use does not infringe the rights of a third party, such as someone else’s trademark). However, registering a trademark can provide you with several significant advantages:
- The owner of a registered trademark is the only one who is entitled to use the mark for the goods/services for which the mark is registered or to grant permission for the use of the mark to another.
- Registering a trademark facilitates enforcement against unauthorized use of the mark in court.
- Already at the stage of submitting the application for registration of the mark, the application serves as a notice to the public of your claim to ownership of the mark and its registration in the trademark database.
- Allows customs authorities to prevent the entry into Israel of goods that infringe your trademark.
- Allows you to apply for international trademark registration in foreign countries using the Madrid Protocol.
- A trademark is a property that can be pledged.
