I previously addressed United States trademark and service mark use, subject matter, and rights acquired with and without federal registration. The original inquiry from my colleague was for the appropriate use of SM, TM and ®. The answers are as follows.
A TM superscript (or subscript) to a trademark notifies the public that the business owner is (i) claiming a particular logo, fanciful design or combination thereof (ii) to distinguish the goods or services of his or her business from those of competitors. The TM superscript is appropriate if the mark is not federally registered. A trademark on a state register also merits a TM if there is use of the logo and/or design in an appropriate manner. There are two points of caution here. First, a superscript TM on a logo and/or fanciful design does not automatically result in a legally enforceable trademark. Instead, logos and/or designs must be used consistently in a particular manner to qualify as trademarks. For example, the trademark must be stamped or otherwise appear upon the product, the box, the product’s label, the display associated with the goods or a website.
However, if a logo and/or design are consistently used in the appropriate manner, and in a commercially reasonable volume, then no TM superscript is required for qualification as a common law (unregistered) trademark. The law is similar for the superscript or subscript SM on logos and/or design service marks, so long as these marks designate services instead of products. The ® as superscript and subscript is reserved exclusively for both United States federally registered service marks and trademarks. Use of this symbol prior to federal registration is unlawful, and I have cautioned many clients to remove it from their products and stationary.
Because federal registration in the United States is the ‘way to go,’ how difficult and expensive is it to attain? There are attorney fees, government fees and additional use requirements, as well as mark logo and design criteria. For federal registration, use of a service mark or trademark must occur consistently outside the state in which the business is primarily located. In contrast, there is no such requirement for unregistered mark use. State registration of a trademark or service mark also does not qualify for ® designation of either products or services.
As with common law marks, there must also be a commercially reasonable volume of use for federal registration. Appropriate service mark use for federal registration is broader in scope in that stationary, invoices, cards, and business cards are eligible. Generally for trademark registration these venues do not qualify as appropriate federal registration use. In the internet age, there is a specific acceptable format for websites functioning as on–line catalogues. Although this law is still developing, it is well settled that a website must contain a purported trademark in proximity to the products. Generally, there must also be a manner in which the customer can purchase the goods from that website.
As an example of internet use, I recently obtained a registered service mark for consulting services on behalf of a client. In this instance, his business name was also his service mark, and it was prominently and continuously displayed upon his linked-in site. In this instance, his linked-in site qualified as use outside Illinois and ‘in commerce.’ However, to confirm an acceptable out of state use with the internet, one must initially always review the developing law on the interactive nature of a website with customers.
© 2011 Adrienne B. Naumann, Esq.
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Intellectual Property for Businesspeople 