Clients often ask why, when and how to use the federal registration (“®”) symbol with their trade or service marks.
The principal reason to use a registration mark ® with your federally registered trademark is to provide notice to the public that your mark is federally registered and has the protections associated with federal registration. A court in a trademark infringement lawsuit can always issue an order directing an infringer to stop the infringing use. However, a trademark’s owner generally can’t get monetary damages unless it can prove that that person had actual knowledge of federal registration.
Use of the federal registration symbol ® provides that notice. Under federal law, 15 U.S.C. §1111, a federal registration symbol can only be used with a federally registered trademark.
Using a federal registration symbol with unregistered marks or with goods or services that are not claimed in a registration can lead to claims of false advertising or even provide a defense of “Unclean Hands” if you seek to enforce your rights against an infringer. When your trademark has not received a federal trademark registration, do not use a federal registration symbol, ®, instead use ™ or SM to show that you are claiming common law trademark rights.
The federal trademark statute provides that anyone infringing upon a mark accompanied by a proper use of the “®” registration symbol is presumed to know that the mark is registered. Legally, this is called “constructive” knowledge, and it eliminates the need to prove actual knowledge that the infringer knew that your trademark is subject to a federal registration. Proving actual knowledge is always a difficult and costly process.
You may have noticed that we have placed the registration symbol three times in our logo and wondered if this is overkill. We don’t believe so. This is because our “logo” is actually made up of three separate component marks, each of which is federally registered:
The name “Sherman IP” – This is called a “word” mark, and it is protected even if we use it in a different type font, color or size.
– The slogan “Adding Exclusivity to Your Creativity”- Our slogan is also a word mark.
– The Stylized “S” – This is a “design” mark and is generally protected in the form (color, shape, proportions) in which it was registered. A person using a similar design for similar services could be accused of infringement, even if their design has somewhat different elements.
If we placed the “®” symbol only once (normally, in the upper right hand corner), we would leave open the argument that constructive notice of registration only extends to the combined use of the three marks. Thus, for example, another legal service provider using our slogan (but not our name or the “S” logo) could claim that it was unaware of its registered status.
By clearly indicating that each of the three marks that make up our new logo is federally registered, we put the world on notice of our exclusive rights to each component.
Do you have questions about how to protect your brand or how to properly label your registered trademark? Contact our office today and schedule a time to speak with a member of our expert trademark legal team.