Many entrepreneurs and business owners wonder and even blindly use the ©, TM and (R) abbreviations, but do they really know what they mean and how to use them? Below we will go a bit into detail. As always, there are regional differences in legislation and practice on which specific advice should be sought. However, there are some generalities across most regions which can provide some basic information.
Trademarks are recognizable designs, words, or combinations that identify a unique brand, product, or service. They are forms of intellectual property that distinguish brands and products from others in their market. Be it words and phrasing or recognizable designs and logos, trademarks allow people to identify companies and their uniquely created products and services.
While there are important steps to take when safeguarding these identifiable marks and reducing risks for disputes and litigation, having a trademark in and of itself doesn’t guarantee protection against infringement. When holders of a registered trademark allege infringement, they pursue civil lawsuits in federal court, rather than with the U.S. Patent and Trademark Office. In trademark infringement cases, plaintiffs have a wider set of remedies available to them, including injunctive relief and monetary damages.
Though trademarks provide protections, simply owning a trademark doesn’t mean anything with the slightest similarity to the trademark’s designs and words constitutes infringement. That’s because infringement, at its very basic core, is a civil claim in which the plaintiff has the burden of proof. Additionally, defendants may have options for raising legitimate defenses against trademark owners who file claims of infringement.
In short, trademarks are any words, symbols (and in some rarer circumstances unique shapes or colors of products) which distinguish a brand and their products from the products of others. Registered trademarks, like other intellectual property protections, are preemptive measures which provide exclusive rights to that distinctive mark. They also ensure public consumers are able to recognize goods and services from a certain source or company, and are not confused or misled.
© is an abbreviation for copyright. Its automatic and there is no legal requirement to register it. Copyright gives the creator of an original literary, musical, film, screen or artistic work including computer software and architecture legal rights for a limited period of time.
TM signifies a trademark. It covers logos, words, letters, numbers, colors, a phrase, sound, scent, shape, picture, aspect of packaging or branding – or any combination thereof. TM denotes that you are claiming a right to use your brand as a trademark, although it may not yet be registered with the relevant IP office. It is a good idea to use the symbol whenever you are considering registration for a given mark or your application for registration is already pending. Using the sign may also help in gaining distinctiveness for a mark which is initially not registrable because it is too descriptive.
The ® (R in a circle) symbol is used to denote registered trademarks. Consistently using it together with one’s own trademark is generally considered good practice. Making it clear that certain words or graphics are registered trademarks protects them against becoming generic in the sense that they no longer identify a specific origin for the product (also called “genericide”). Using the symbol also makes it more difficult for others to use ignorance as a defense in trademark infringement cases. The ® symbol is also commonly used to acknowledge the existence of third-party trademark rights, whether in marketing materials or works of reference.
In some jurisdictions, such as the United Kingdom, use of the ® symbol without an actual registration is specifically illegal, and in other jurisdictions doing so may be considered as misleading advertising even if not specifically regulated.
The ® symbol is generally not based on an explicit legal definition, its use is conventional and supported by precedent. In this respect, it is different from the copyright symbol © (C in a circle), defined in Article III of the Universal Copyright Convention, and the record producer/performer symbol ℗ (P in a circle), defined in Article 11 of the Rome Convention, for example.
Typographically the ® symbol and the other trademark symbols are usually used as a small superscript sign immediately after the mark, and the appearance of these characters in most fonts is designed accordingly. Again, here the © and ℗ symbols are different, as they are used as “words” in their own right and designed accordingly (approximately same height and alignment as capital letters).
Trademark owners can sue others for infringement under the federal Lanham Act, but their claims must meet the “likelihood of confusion” standard. This means the use of the trademark in question would cause consumers confusion about the source of the product or their own approval of that product. To determine whether any plaintiff alleging infringement meets that standard, courts consider a number of factors, such as:
- Strength of the mark
- Proximity of the goods/services
- Similarities between the marks
- Proof (evidence) there was actual “confusion”
- Similarities in how goods / services are marketed
- A typical consumer’s degree of caution relative to the good / service
- the intent of the defendant
There can be quite a large spectrum in these cases. Using the exact same mark on the same type of product is clearly infringement. Naming your company “Apple” and selling digital phones or laptops would likely cause any reasonable consumer confusion. On the other end, using the same term or mark for a completely unrelated product would not. Your “Apple Auto Parts” company, for example, is easily distinguishable from “Apple Computers.”
In between those two extremes lie many trademark infringement cases which can be quite complex and nuanced. In these matters, courts will apply the factors for determining the likelihood of confusion to the specifics of the case. There may also be trademark cases involving claims of trademark dilution or disparagement, if a mark is considered “famous.”
Liability & Potential Damages
In order to prevail on an infringement claim under the Lanham Act, the plaintiff must show your use of the trademark, its use in commerce, the likelihood of confusion in the marketplace, and account for damages caused as a result of the alleged infringement.
If you have been sued for trademark infringement, the following possible consequences apply:
- Injunctive relief, meaning a court order to stop or limit your use of the mark (this can be ordered prior to final case resolution)
- Monetary damages (with the possibility of treble damages in some circumstances)
- A required accounting of profits and disgorgement of profits made by virtue of your infringing use of the mark
- An order for you to pay the plaintiff’s attorney fees (allowed only in exceptional cases)
Trademark Infringement Defense: Affirmative Defenses & More
Defendants accused of trademark infringement have options for a defense. While those options vary depending on the circumstances and facts involved in a case, they generally include:
Parody – If you enjoy Saturday Night Live, you’re likely aware of how trademarks can be used for the purpose of parody. If you were to watch an SNL sketch which mentions Verizon and a shows a salesperson selling a product with absurdly fast 400G (as compared to 4G) technology, there’s little if any likelihood for confusion that SNL makes or sells such products.
In trademark cases, courts have upheld First Amendment rights permitting certain parodies of trademarks which aren’t overtly tied to commercial use. Some courts have applied the standard for likelihood of confusion, and others have expressly held the First Amendment trumps trademark law, at least in some cases. Though parody is a defense to infringement, there are provisions for disparagement in federal trademark law and potential causes of action for slander if the use of another’s trademark is excessively disparaging or harmful.
Fair Use – The “fair use” defense has evolved into two different types of fair use:
- Descriptive fair use – The classic fair use defense concerns the good faith use of a mark for is primary (descriptive) meaning, rather than its secondary meaning (which is when consumers associate a particular term or mark with a particular product provider or brand). This usually happens when marks also have descriptive attributes. The company which makes Sweet Tarts candy, for example, was unsuccessful in an infringement action against another company which used “sweet-tart” when advertising its juice, which arguably had a sweet and tart taste. You can use another’s trademark for your own goods or services if it is descriptive fair use.
- Nominative fair use – Another form of the fair use defense is called nominative use. Nominative use is when another’s trademark is used for the purpose of the mark owner’s product, not the user’s own product. It’s best illustrated in comparative advertising and the media. Coca-Cola may compare it’s product to Pepsi, and a local news station can report on things like an event being held at a Starbucks. When defendants prove their use of a trademark was in reference to the mark owner’s products or services, it becomes the plaintiff’s burden to prove any likelihood of confusion. Courts may also apply a likelihood-of-confusion test specific to nominative fair use, which asks: (1) Is the product / service readily identifiable with trademark use? (2) Was the mark used more than reasonably needed to identify the owner? and (3) Did the use of another’s trademark falsely suggest the user is endorsed or sponsored by the trademark owner?
Other Trademark Infringement Defenses
In addition to affirmative defenses, there are also other ways to defend against claims of trademark infringement, including equitable doctrine defenses and challenges involving certain aspects of trademark law. These include:
- Doctrine of Laches – Requires a plaintiff to bring a timely claim for preliminary injunction when they knew or should have known of infringement.
- Estoppel – Also known as acquiescence, estoppel involves a plaintiff implicitly or explicitly permitting use of its mark.
- “Unclean Hands” – The doctrine of “unclean hands” may relate to a plaintiff’s illegal or egregious conduct, such as extreme and oppressive demands or false statements that marks are registered when they are not.
- Contesting registration – Newly registered trademarks, typically those registered for 5 or less years, can potentially allow defendants in claims to content the owner’s right to exclusive use of the mark in its infancy.