Return on Innovation®



March 12, 2024

When you buy a house, you get a deed.  You are now a homeowner, and everyone knows it from the deed in your name and your occupation of the house.  When you register a trademark, you get a registration certificate.  You are now a mark owner, and everyone knows it…how?

Just like home occupation, trademark use does not necessarily mean that you definitely own the mark.  Renters rent.  Trademark users…CALL DIBS.

The trademark equivalent of calling dibs on your business name, tagline, or logo, can be done by placing the “™” emoji after the appearance of the mark (or beside the lower right corner of an image if that is your mark).  Anyone who is using a mark and claiming ownership of that mark can do this, and it should be done at the earliest possible date and at any time you are using that business name or logo or any image or tagline that you are using to identify your brand.  For instance, ABC123™ is a perfect way to say “ABC123 is MY brand, and I am putting everyone on notice of this”, even when written out in text form as here.

But what about that “®” symbol?… That’s for registered trademarks – as in, registered with the United States Patent & Trademark Office (“USPTO”).   This is achieved by a successful trademark application submitted to the USPTO, which anyone may do – but the help of an experienced trademark attorney is strongly recommended, as there can be hiccups during this process.  As the term implies, a trademark application is simply a formal request to the USPTO to register your mark on the Principal Register in the United States.  This trademark application process usually takes many months (sometimes years) and will be discussed in more detail in a separate article.  For now, it is enough to know that submitting a trademark application does NOT mean that someone now has a trademark registration, which is granted or denied at the end of the trademark application process.  During the pendency of that trademark application, mark claimants and users are still required to use the “™” instead of the “®” designation until the grant of the mark on the Principal Register following a successful application and examination process at the USPTO.  At that time, and only at that time and during its lifetime on the Principal Register, may a mark owner then designate their mark with “®”.  For example, the Starbucks logo on with “Starbucks Coffee” included is a registered mark, but the mermaid image alone is a pending trademark application and therefore uses the “™” designation, as shown.

There are many reasons – strategic and financial – why people or businesses may choose to register their mark or keep it unregistered.  Mark registration with the USPTO confers several benefits to the mark owner, such as:

  • Protection for the mark(s) under the Trademark Act, 15 U.S.C. §§1501 et seq.
  • Access to the federal courts to enforce rights to the mark(s)
  • Increased monetary damages against infringers, as well as potential criminal penalties against infringers in the case of counterfeiting
  • Option to register mark(s) with U.S. Customs and Border Protection’s e-Registration Program
  • Establishing legal presumption that mark owner has the exclusive right to use mark(s)
  • Option to use U.S. registration to pursue international registration of the mark(s)

Given the magnitude of the potential consequences that surround use of a trademark for your business, it is always best to consult with an experienced trademark attorney prior to finalizing the word, phrase, or image that you choose to identify your brand.  Make your brand as original as you are and take the right steps to protect that brand as you create and grow!