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Trademark basics: What does the R inside a circle mean?

Dennemeyer Group / August 13, 2021
Trademark basics: What does the R inside a circle mean?

When you are deeply involved in Intellectual Property (IP), the way we always are at Dennemeyer, it is important to maintain perspective about how certain facts of this industry are not readily known to the ordinary person.

There are many signs and symbols in today's world that we take as givens, not least on packaging and containers. But sometimes curiosity warrants a second look, and regarding the particularities of trademark rights, someone might well ask, "What does the R inside a circle mean?"

As experts, we are just as happy to address fundamental questions like this as we are to handle queries about some of the most complicated points of the legal procedure! Let us dive right in.

The basics of trademark symbols

There are the three trademark identifiers you will see on product packaging, adorning company signage, in physical or digital advertising materials and within other contexts:

  • TM ( TM ) — The abbreviation for trademark. According to the International Trademark Association, it is usually used in connection with an unregistered mark.

  • SM ( SM )— A service mark, which has the same function as a trademark but denotes a service rather than a product. Like its counterpart, it is most often used for unregistered marks.

  • R (®) —A trademark or service mark registered with at least one national and / or regional IP office somewhere in the world. In this regard, care must be taken to indicate which country since, in many jurisdictions, it is an offense to misrepresent that a trademark is registered when, in fact, it is not. For example, packaging that displays the ® symbol could be problematic without an additional indication, such as using an asterisk (*) followed by a list of countries where the trademark is registered.

Though these marks use characters of the Latin alphabet, they are instantly recognized worldwide by anyone who deals with IP. The SM symbol is probably the least commonly seen of the three, while the registered trademark symbol is on the other end of the spectrum. 

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What is the difference between the R and TM symbols?

There is a simple but fundamental distinction between these two marks. The ® symbol can only be applied to trade or service marks that have been registered with an agency like the United States Patent and Trademark Office (USPTO) or the European Union Intellectual Property Office (EUIPO) as indicated, with a reference to that registration office. TM, meanwhile, can be used on any unregistered mark that would fit the conventional definition of a trademark — i.e., a logo, symbol, catchphrase, image, drawing or some combination thereof.

Registered trademarks carry a legal weight that their unregistered counterparts do not. If another individual or organization were to misappropriate your registered trademark and use it as their own anywhere in the country or countries it is registered — an act of infringement  — you would have many legal options to stop them. These include cease-and-desist letters sent by your trademark lawyer, injunctions ordered by judges and awards of monetary damages for revenue you may have lost due to the infringement. In case your legal counsel can effectively argue that the defendant's infringement on your trademark was willful or in violation of an anti-counterfeiting law, steeper fines are not out of the question. In some jurisdictions, the monetary award for damages can be higher if the infringement is shown to be intentional. If goods bearing a registered trademark display the ® symbol, this fact could be considered evidence that the infringer was aware of the plaintiff's rights.

According to the United States Patent and Trademark Office, "a trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services." Registering your trademark is the best way to ensure that your rights are protected and that customers easily recognize your brand in the marketplace. 

Unregistered trademarks, though not entirely unprotected from wanton acts of infringement, have little on their side. If, for example, a business in your city or state attempted to use your unregistered mark – say, a distinctive logo identifying your shop – for its product or service, those laws relating to passing off or even copyright laws concerning the protection of an artistic work could prohibit such an act, but we must stress that such protection is not guaranteed.

Also, if the same thing happened to your unregistered trademark halfway around the world, the same principles likely would not apply. It would be difficult to conclusively establish that an atmosphere of unfair competition had been created, owing to the distance between the two businesses and the mark's unregistered status. On the other hand, trademark rights provide a prima facie statuary right, which is a significant advantage of registration. 

Last but not least, keep in mind that another major benefit of registration is that you hold the right to license your trademark for use by other parties and earn royalties. Although unregistered trademarks and service marks can be licensed in many jurisdictions, there could be practical complications affecting the goodwill and reputation of a business. 

What steps should you take to be eligible for the R symbol?

At first glance, being able to use the ® symbol seems uncomplicated: You simply file a trademark application with the relevant IP office in your jurisdiction. In practice, things are not quite as clear-cut. For example, in most jurisdictions, it is not possible to use it until a pending trademark application becomes registered and marketing materials need to be monitored constantly for compliance. 

In addition to the basic information to be included on the filing (an example of the mark, explanation of its relevance to your business, description of the goods to which it applies, etc.), there are various use requirements for registration. In some jurisdictions, it must be shown that you are either actively using the mark in commerce (in its unregistered, TM-adorned form) or that you have a definite intention to use the trademark in the near future. 

In theory, anyone could use your unregistered mark to their heart's content during this processing period. However, in most jurisdictions, the rights to a trademark will be backdated to the filing date upon registration. To minimize any potential harm, you need to move fast, submit required filings and respond to office actions in the most prompt fashion possible. It is also advisable to conduct a preliminary clearance search before filing, identify the chances for successful registration and check that a trademark is suitable for use without risking infringing the rights of another person. Fortunately, the trademark registration process in many jurisdictions is measured in months, not years.

A company's identity can only thrive if the market conditions allow for its success, which requires the help of established experts who have been through this process before. In today's economy, where businesses are fighting to be the best and most well-known in their industry, branding is essential for those who want to set themselves apart from competitors.

Suppose you complete the filing properly on the first attempt (likely with the help of an experienced trademark lawyer) and pay all appropriate fees. In that case, you could be registered in as little as six or seven months, depending on the jurisdiction, as processing times vary considerably. This cycle may be delayed if there are errors in your initial application or someone files an opposition. In either of these circumstances, the timeline for resolution is too uncertain for us to make a definite statement about its length.

How can you maintain the validity of your registered trademark?

The simplest way to keep your trademark alive indefinitely is to file renewal applications and pay fees right on time. For most jurisdictions, this is 10 years from the application or registration date. Many IP offices also request that in the meantime, you submit proof of your trademark being in use along with your renewal application and fees — or, failing that, evidence that you have tried to use the mark but were prevented from doing so by circumstances beyond your control.

Furthermore, you can broaden the scope of your mark's protections by submitting it to the World Intellectual Property Organization (WIPO) if the country where you first registered the mark is part of the Madrid System. Successfully doing so will effectively extend the protections you enjoy to the 108 members (covering 124 countries) of the Madrid Union.

Along these paths, both straightforward and labyrinthine, it is always best to receive counsel from long-established experts in trademark registration and regulation. See what we can do for you and your brand identity.