What is the Difference Between the Symbols ®️ and ™️ from a legal perspective?

The symbols ®️ and ™️ are applicable to US trademark law. Trademark law provides an avenue for individuals to protect the marks, symbols, sounds, colors, patterns, etc., (collectively, “marks”) that are used to present their brands, products, or services. The reason for the existence of these symbols is to put the public on notice that the user of these marks claims exclusive rights in them. That is, it puts the public on notice not to use these marks for businesses, products, or services that could create confusion as to the identity or source.

Trademark rights are, for some businesses, the most important asset that the business owns. These businesses work diligently to create a brand that stands out against all others. This requires diligent marketing and brand positioning that takes place over time. Trademark law prevents other businesses from creating counterfeit goods or goods whose markings are so close in nature to the trademark holder’s protected mark so as to create customer confusion. Allowing this to happen would certainly erode the trademark holder’s brand. As such, trademark laws allow the holder of trademark rights to bring a legal action to exclude or stop others from the infringement.

The traditional trademark designations are (TM) or ™ and (R) or ®️. Anyone who uses a distinctive mark may employ the TM symbol to put others on notice of the trademark claim. If a trademark is registered with the USPTO, the trademark owner can use the (R) symbol.
This article discusses the various types of trademark protections and the difference between the symbols used to signal legal protections.

Protection of Trademark Rights

Trademark law is both state and federal in nature. That is, all states have either statutory or common law protections in place for the users of trademarks to represent businesses conducting business within that state’s borders. The business does not have to be organized in that state, but it generally does have to actively carry on business (and potentially be registered to do business in the state). In most of these states, nothing is required to secure trademark rights other than use a mark (that meets the criteria for trademark protection) to represent an active business. If a business is already using a similar mark, an use of your mark would create a level of customer confusion, you are prohibited by state law from using your mark to represent your business. The effect of this rule is, “first come - first serve”. That is, whoever uses the mark first to represent a business within the state secures the applicable trademark rights and can exclude others from using the mark. The primary remedy for this “first to use” scenario is to secure federal trademark rights.

Federal law allows the individual who uses or intends to use a mark to represent a business, product, or service, to secure nation-wide trademark rights. These rights trump state trademark rights and allow the holder to exclude others from using confusingly similar marks in any state. Securing federal trademark rights requires filing with the United State Patent and Trademark Office (USPTO). The applicable mark must meet the criteria for a protectable mark and must be used in conjunction with a business with one year of filing for protections. Upon making a filing, the USPTO will examine the mark for protectable characteristics. If it meets the necessary characteristics, the USPTO will do a thorough search to see if a confusingly similar mark is being used anywhere in the Untied States. If there is a confusingly similar mark being used, it will prevent the filer from securing the trademark rights. As such, it is best to do a through USPTO and internet search before filing for protections. If there is no confusingly similar marks in use, the USPTO will grant trademark rights to the filer. She can now employ the federal court system to force anyone who later infringes upon her mark with counterfeit or confusingly similar goods to stop.

Use of the ®️ and ™️ Symbols

The ®️ and ™️ symbols are designations authorized by the USPTO to be used with marks claimed to be protected under state or federal law. The ™️ symbol indicates that the holder claims trademark rights in a particular mark. These rights may be filed federally (and pending) or claimed under state common or statutory law. The ®️ symbol, on the other hand, is used to express to the world that the mark has been register and is subject to protection under federal trademark law. Most businesses employing these symbols begin by using the ™️ and later change to using the ®️ symbol once their mark is registered.

Next Article: Process for Filing a Federal Trademark Back to: INTELLECTUAL PROPERTY LAW

Discussion: What do you think are the primary benefits of including a symbol to demonstrate claimed or registered trademark rights? Can you think of any disadvantages?

Practice Question: Eliot wants to put the world on notice that he claims trademark protection of the symbol representing his business. He has filed for federal protection with the USPTO but no trademark rights have yet been awarded. What are Eliots options for including a trademark designation beside his companys symbol?