James R. Balmforth: Can I Put A Trademark On My Logo?

A trademark, trade mark, or trade-mark is a recognizable sign, design, or expression which identifies products or services of a particular source from those of others, although trademarks used to identify services are usually called service marks. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher, or on the product itself. For the sake of corporate identity, trademarks are often displayed on company buildings. It is legally recognized as a type of intellectual property.

The first legislative act concerning trademarks was passed in 1266 under the reign of Henry III, requiring all bakers to use a distinctive mark for the bread they sold. The first modern trademark laws emerged in the late 19th century. In France the first comprehensive trademark system in the world was passed into law in 1857. The Trade Marks Act 1938 of the United Kingdom changed the system, permitting registration based on “intent-to-use”, creating an examination based process, and creating an application publication system. The 1938 Act, which served as a model for similar legislation elsewhere, contained other novel concepts such as “associated trademarks”, a consent to use system, a defensive mark system, and non-claiming right system.

Why Use a Trademark?

Individuals and companies have products or services trademarked to protect the product from being used without the permission of the source company. Most countries have patent laws that are designed to protect against copyright infringement. In the United States, the United States Patent and Trademark Office (USPTO) serves this function.

Although most countries have agencies through which businesses can have their products trademarked, international copyright regulation is more complicated than in the U.S., as there exists no universally recognized patent office, rules, or consistency.

Should I include trademark symbols in my logo?

Let’s clarify the symbols you may see hanging around a logo. They are the “Circled-R” (®), TM (), and SM (℠). These are used to indicate how the mark is protected. The ® symbol means “registered” and therefore, can only be used once the mark has been officially registered with the United States Patent & Trademark Office (USPTO). By contrast, and ℠ are usually used with unregistered marks simply to give notice of ownership of rights to that mark — meaning you don’t actually have to apply for federal registration to use them. “SM” means “service mark” and is technically used to distinguish services, whereas “TM” (trade mark) should be used to distinguish goods — though is commonly applied to both.

You Should Include

If you have gone through the process of registering your mark, let the world know! Federal registration allows you to use the registered trademark (®) symbol. However, you can only use it after USPTO has actually registered the trademark, not without an application or while an application is pending. Following registration, you can only use the registered trademark symbol on or in connection with the goods and/or services listed in the federal trademark registration.

Supposedly, failure to use the symbol may actually limit your ability to collect damages for trademark infringement. But, even this is somewhat subjective. Right now, if you visit the websites of some large brands, you’ll notice that Nike does not use any trademark symbols in their website’s logo. Neither does Microsoft (even though they used to in the not-so-distant past). Starbucks uses (though I’m quite sure they’re federally registered). Staples has ®. Walmart has none. Burger King has ®. Bed Bath and beyond has®. GE has none. IBM has ®. Apple has none. Sony has none, but the PlayStation logos (which belong to Sony) all have ®.

So…what’s going on? As I said, inclusion of these symbols is optional. You’ll notice that large brands like these used the ® symbol in their earlier days. From that, I’d conclude that once you are a globally-recognized brand (with highly-paid legal departments), you may no longer feel it’s necessary to notify the public that your logo is protected… by that point, it’s understood. For young, small, or localized companies, this is not the case, so go ahead and show off that ® proudly. You’ve earned it.
You CAN include … but should you?

Any time you claim rights in a trademark, you may use the or ℠ symbol to alert the public to your claim, regardless of whether you have filed an application with USPTO.

It’s not necessary to include?

This is a matter of opinion, but I prefer to leave it off. It offers no real legal protection, no more than you already have under common law. Common Law rights state that merely using your logo in the course of your business gives you the rights to it. (Of course, federal registration provides several advantages over common law, but that’s a different discussion. See “Is it necessary to trademark my logo?”.) I prefer to leave it off because it can often feel arbitrary, like an afterthought, and just adds clutter to a logo (which I am totally not a fan of). This is especially true when the logo is used at small sizes, and the TM or SM tends to look like a random pen smudge because it is so small, which can be distracting.

…But you still may decide you want to use it. Why?

The whole purpose of using or ℠ is to bring attention to the fact that you are claiming rights to it. So to make this claim exceedingly and abundantly clear, you can include or SM; but it does not technically give you any added protection. However, for companies that have legal departments or Intellectual Property lawyers at their disposal, they may often err on the side of caution and advise adding it. Also, consider the subtle psychological cues it communicates— will it make the brand appear more legitimate and serious to unknowing consumers? Possibly.

Where should it be placed?

If you’ve decided to include , ℠, or ®, where should it go? While there is no hard and fast rule, common practice puts it to the top right of the logo. Sometimes it works better at the bottom right instead. If the logo designer knows upfront that you want to include it, they may be able to find a way to work it a bit more seamlessly into the design, so that it helps to balance the logo, as opposed to looking like an afterthought or mistake.

What is Trademark vs. Registered?

The trademark symbol (TM) is a mark that companies often use on a logo, name, phrase, word, or design that represents the business. The registered symbol (R) represents a mark that is a registered trademark with the United States Patent and Trademark Office (USPTO).

Some people think you can use the two interchangeably, but this is not the case. The TM symbol actually has no legal meaning. You can use the symbol on any mark that your company uses without registering it.

The most common use of the TM symbol is on a new phrase, logo, word, or design that a company plans to register through the USPTO. The symbol can indicate your intent to move forward with obtaining a legal trademark. It also helps stake your claim in the design, alerting competitors that you plan to use it for your business.

But as mentioned, there is no legal protection when using TM. If you use a mark that infringes on someone else’s trademark, you still put yourself at risk for legal trouble. When a company or person holds a trademark on a specific design, the mark has restricted use. Only the owner can use, produce, copy, or profit from it. In the event that someone else tries to copy it, that owner can take legal action in a federal court.

So before you add TM to the end of your mark, do some research? You’ll need to make sure that no similar mark already exists in the Trademark Electronic Search System. If you find something similar, the next step is making changes to your mark so that it doesn’t infringe.

Once you’ve determined that your mark is truly unique, you can start using the TM symbol at the end. The three main placement techniques for notifying competitors of your intent to use the mark are:

• Placing a symbol (TM, ®, * [asterisk], or dagger/double dagger) at the first use of the trademark but not on subsequent uses, then adding a footnote that overviews the trademark

• Placing the TM or ® symbol next to the trademark every time you use it

• Using a different font or formatting, such as bold, italic, or uppercase, for the trademarked words to differentiate them from other text.
An example of a footnote for the techniques listed might be something like: “The Apple logo is a registered trademark of Apple, Inc.” You may also choose to include a reference to the legal trademark, such as “The Apple logo is a trademark registered in the U.S. Patent & Trademark Office.” It’s also acceptable to abbreviate the second portion as “Reg. U.S. Pat. & Tm. Off.”

It’s widely accepted to place it at the top left corner of the mark in superscript text. If it doesn’t look good there, you can drop it to the bottom right corner in subscript text. But putting it elsewhere is rare.
When you add TM to the mark, it makes sense to move forward with the trademark application. Make sure you include all required documentation.
If you’re submitting a mark that only contains words, your trademark application must include a mockup of the word or words as you plan to use it/them. When you’re trademarking a logo or symbol, include an image of the mark exactly how it will look when you use it on your product, collateral, or other materials.

It’s also important to note that you’ll only receive trademark protection on the exact design. So you may want to file several applications for a logo or symbol. If you plan to use it in more than one color, submit an application for each version, including one in black and white. This protects your mark in all forms.

Once you receive approval on your trademark application, you can legally start using the registered symbol. Using the symbol shows all competitors, customers, and others in the industry that you legally own the rights to this mark.

When using either mark in print, the general rule is to use it in the first instance of the mark. After that, you can stop using it without losing the legal protection.

When does a logo become a trademark?

Your logo becomes a trademark when it appears on labels, packaging or the product itself and the public recognizes the company behind that particular combination of colors and shapes. Imagine you see a sign with golden arches; you probably are picturing a Happy Meal (also trademarked) or similar fast food item at a McDonald’s restaurant.

Why wouldn’t you register your logo as a trademark?

There are many reasons why you might choose not to pursue trademark registration, depending on your current and anticipated circumstances:

• You’re not sure how long your business will last. Applying for trademark registration is time-intensive, averaging about 10 months to complete the process. The application is expensive, too, with a minimum filing fee of 5 if you prepare and submit the most basic application without legal counsel.

• Your logo might change in a couple of years. Only the exact version that is registered is legally protected, and you could actually weaken the registered trademark’s rights by using variations. Also registered logo trademarks must continue to be used in order to retain their rights. If you don’t plan to continue using your logo then there might not be a reason to register.

• Your logo can’t be registered because it is similar to another already in existence somewhere else in the country. As long as you stick to your geographic area, then state registration or common law probably provides enough protection.

Trademark Lawyer Free Consultation

When you need legal help with a trademark, copyright, patent, or other intellectual property matter, please call Ascent Law LLC for your free consultation (801) 676-5506. We want to help you.