marking generally refers to the use of the trademark designations “TM,” “SM”
and ®, which are commonly accepted designations for identifying trademarks and
indicating their ownership.
When brand owners use their trademarks within
the U.S. – the issue of whether to use the trademark symbols TM, SM or ® is relatively
straightforward. The general rule is to
use the designation “TM” for (federally) unregistered
trademarks for products (Trademark™) and “SM” for (federally)
unregistered marks for services.
Once a trademark registers with the United States Patent and Trademark
Office (“USPTO”), however, the TM or SM may be replaced with the coveted “R in
a circle” -- ®.
Once trademarks register with the USPTO and
brand owners begin using the registration symbol “®” next to their marks on
packaging, product sheets and/or marketing materials, what should brand owners
do with respect to using the “®” symbol in countries where their marks are not
When U.S. registered trademarks are used in
countries where the marks are not registered, the issue of trademark marking
can be complicated, since many countries have their own trademark marking
laws. Understanding local laws and
legal issues that may arise with respect to trademark marking is a first step
to understanding and minimizing the potential risks of violating certain
country laws and requirements.
It seems clear that most countries recognize
the trademark registration symbol ® - and common law trademark symbols SM and
TM – in practice. Their use, however, are typically optional and/or have
no recognized legal effect as to protection of trademark rights in some
countries. Although the ® symbol has become well recognized, it is by no
means universally accepted. For instance, “Marque Deposee” is preferred
in some French language territories and “Marca Registrada” or “M.R.” is
preferred in certain Spanish or Portuguese speaking territories.
Certain country laws including, China, Chile,
Costa Rica and Indonesia, require the use of proper registration notice in
order to maintain a registration and trademark rights. Furthermore, other
countries, including the United States, Bolivia, Denmark, Philippines, and
European Union, require proper use of the registration symbol ® to recover
damages and attorneys’ fees for willful infringement, while some other
countries require proper use to protect against loss of trademark rights (such
as the mark becoming generic).
However, some local laws make it unlawful to
claim trademark registration status when a mark is not registered in that
country. Countries, including Germany, China, Ireland, Italy, New
Zealand, Pakistan and Peru, may actually impose penalties for mismarking of
trademarks, such as fines, damages, injunctions and/or imprisonment.
There are also a few countries that may impose
penalties for use of the symbols “TM” and/or “SM” if consumers would perceive
use of those designations as an indication that the mark is actually
“registered” in that country; France appears to be one of those countries.
The dilemma for brand owners that have
registered their marks in only some of the
countries in which they conduct business is that in order to conform to
local trademark marking law requirements, they may need to develop tailored
marketing and packaging materials to avoid violating those laws. The main problems associated with such
tailoring of marketing and packaging materials are - of course - costs and
Based upon the differences in local trademark
laws, developing a “one-size fits all” trademark marking strategy is likely to
prove difficult, as one strategy might violate - to a certain extent -
certain local laws or result in loss of certain trademark rights against an
infringer, while others may not. Adopting a global trademark marking
strategy that is not tailored to each specific jurisdiction, however, should be
one that seeks to minimize potential risks. Although it is preferable for brand owners to tailor their
trademark marking policies to conform to local law requirements, for most
companies, however, business realities, such as cost and time, result in the
implementation of strategies designed to minimize cost, time and risk.
For discussion about the benefits of securing
U.S. federal trademark registration and about global trademark protection
considerations, please review my blog posts here