Trademark Notice – The Benefits Of Proper Marking And
The Consequences For Not Marking
By:
W. Edward Crooks, Esq.
Providing proper trademark notice or “marking” is done by using a symbol or abbreviation
to signify that a word, slogan, or design is in fact a trademark. The importance of proper
trademark notice is perhaps one of the most underappreciated aspects of intellectual
property law, as proper notice and marking serves a number of purposes.
First, marking helps ensure that the public identifies a trademark as a trademark, rather
than as a generic term for a product or service. Second, marking provides notice to
consumers and competitors that the word, slogan, or design is considered by its owner to
be its trademark. Third, proper marking of federally registered trademarks preserves a
trademark owner’s ability to recover all of its damages during an infringement suit.
The first step in properly marking a trademark is to choose which marking abbreviation or
symbol is appropriate. For this purpose, there are primarily three categories of marks:
trademarks, service marks, and federally registered marks. The three marking symbols or
TM SM
abbreviations that correspond to the categories of marks are: , , and ®.
TM
The
abbreviation is used with unregistered trademarks, which are words,
slogans, or designs that are used on goods or actual products.
abbreviation is used with unregistered service marks, which are words,
The
slogans or designs used in conjunction with services.
The ® symbol or any mention of federal registration can only be used with
federally-registered trademarks or service marks, and only when the trademark or
service mark is used with the particular goods or services listed in the registration.
SM
For example, if a company has a federal trademark registration for BARRACUDA hand
tools, the company would not be permitted to use the ® symbol for BARRACUDA tires.
Aside from the benefits of proper marking noted above, failure to provide proper notice of
a federally registered trademark can be costly. The trademark laws state that a trademark
owner who fails to provide proper notice of its federal registration can only recover its lost
profits and damages from the point at which the infringer receives actual notice of the
federal registration. For example, if a company has been infringing upon a federally
registered trademark for several years, but the owner of the trademark never applied the ®
to the products, damages could only be recovered from the date the defendant is told it is
infringing upon the trademark, which many times is when the lawsuit is filed. Failure to
provide notice in this example may have severely limited the amount of damages
available. For a smaller company with limited with limited financial resources, the lack of
damages may be so significant that a lawsuit may not be worth the expense.
If the trademark owner consistently marks its products with the ®, it does not matter
whether or not the infringer actually sees the notice. Use of the ® symbol is therefore
“constructive” notice to everyone of the trademark owner’s registration.
While failing to provide notice of a federally registered trademark may limit or eliminate
the damages available to a plaintiff, it is not a defense to infringement. Even though no
damages may be available, the plaintiff may still be entitled to an injunction going forward
forcing the defendant to stop using the trademark. Therefore, the burden to search the
federal trademark database rests with each person or company that adopts a trademark,
as they may be liable for infringement even if the plaintiff does not mark its products.
It is important to note that merely filing a trademark application with the Trademark Office
does not entitle the applicant to use the ® symbol. After filing, trademark applications go
through an examination phase followed by an opposition phase, and may remain pending
yet not “registered” for a year or more. During this period, the applicant must continue to
TM
SM
use the
or
symbol. In fact, courts have held that improper use of the ® symbol,
when used with the intent to mislead the public into believing that the trademark is
registered, is grounds for denying the registration of an otherwise registrable trademark.
Additionally, use of the ® symbol with unregistered trademarks may constitute false
advertising.
It becomes clear that proper trademark notice is a crucial part of a well-designed and
carefully planned Intellectual Property program.
Copyright 2006 Hahn Loeser & Parks LLP