TO MARK OR NOT TO MARK, THAT IS THE QUESTION!

Trademarks, whether registered or not are valuable assets. The Circle R, or ®, is used to show that the mark’s owner has registered their mark, be it a word, design or logo with the U.S. Patent and Trademark Office (USPTO). Unlike the TM (trademark) or SM (service mark) symbols, which can be used without registration, registered marks provide the owner special rights. Only those who have registered their mark may use the ® symbol.

Why is the Circle R Used?

The ® provides notice to anyone seeing it that the mark is already registered and that other marks resembling it may not be legally used. Violators are subject to penalties and in some cases, disgorgement of profits generated by the use of the mark. Though not required, the failure to use the ® in association with one’s mark, makes defending the mark more difficult. Owners of improperly identified registered marks, must prove an infringer knew the mark was registered at the time they used it and intentionally used it anyway.

One exception is the use of a mark in written documents. In a magazine or newspaper article, advertisement, book, webpage, etc., the ® only needs to be used on the first appearance of the mark in the publication or shown wherever the mark is most prominent.

How to Place the Circle R

USPTO regulations do not specify were one must place the ® on one’s mark. However, modern convention suggests that the ® be placed near the upper right-hand corner of a mark so as to appear in superscript. If it cannot be placed there for any practical reason, or because it diminishes the appearance of the mark, it may appear instead at the lower right-hand corner of the mark. It is generally accepted that the ® not be placed above, below, or to the left of the mark.

How Does One Register Their Mark?

1.    Decide whether the mark will be a standard character mark, a stylized/design mark, or a sound mark. A standard character mark is simply a text version of the trademark. A stylized or design mark involves stylized text and/or a logo. A sound mark is a trademark for a song, jingle, or catchphrase.

2.    Identify what goods or services, or both, which are associated with the mark.

3.    Use the USPTO trademark search tool and ensure that the mark is not already in use and registered.

4.    Determine the basis for filing of the mark. This is done by deciding whether that the mark will be or is already in use in commerce by the registrant, or that the mark will be used in the future.

Once armed with this information and knowledge proceed to the USPTO website and submit a registration application. Once the application has been submitted, await approval (3 months to up to one year). If the application is approved, the mark will be published in the USPTO’s weekly magazine, the Official Gazette (for comment or the filing of an objection) and the registrant notified. If the application is deficient or rejected the applicant will receive an Office Action indicating such.

Maintaining Registration

Once the Statement of Use is approved, the USPTO will issue a registration of the mark and the ® may be used. The USPTO does not monitor a mark or seek out infringers. It is the responsibility of the mark’s owner to enforce and defend their mark. For details regarding maintenance of one’s mark and fees go to USPTO.gov.

Mark on!