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The Intellectual Property StrategistFeaturesIntellectual PropertyLitigationTrademarks

Proper Notice of Trademark Rights: Using Trademark Symbols for Three-Dimensional Packaging and Product Designs

By Stephen Lott and Lauren Gregory
July 01, 2022

Among the most common questions trademark attorneys are asked is what the differences are between the symbols ®, TM, and SM. When should such symbols should be used? Where should they appear? How frequently? Do they even need to be used at all?

For most trademarks, the answers will usually be the same: ® refers to a federally registered mark, and can only be used in connection with a mark that is registered with the U.S. Patent and Trademark Office; TM and SM refer to "trademark" and "service mark," respectively. TM is used for brand names for products and SM for services. These two symbols are typically used when the mark is not federally registered (but may be used with federally registered marks). All three of these symbols are designed to place the public on notice of the scope of rights claimed by the trademark owner.

As for how the symbols should be used, the Lanham Act does not require any specific placement, and does not mention use of the "TM" or "SM" notices. It only indicates that the registration symbol should be used "with the mark." 15 U.S.C. §1111. In practice, owners of word and design marks typically place a trademark symbol directly after the mark in superscript (e.g., Gibson®). The general rule is that a registration symbol should be used with the first and most prominent placement of a mark in any given advertisement or other space where a mark is displayed.

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