For additional country-specific information on this topic, consult:
Country Guides: Essential Information on Trademark Protection Worldwide
section V. Registration D. Marking Requirements.
1. What is trademark marking?
Trademark marking refers to the use of a commonly accepted or legally prescribed designation to identify a word, logo, slogan, design or other source indicator as a trademark or service mark, or to describe some aspect of the mark (e.g., its ownership or registration status).
For instance, certain symbols, when used in conjunction with a mark, give notice to the public that the owner is claiming trademark rights in the material preceding the symbol. One common example of trademark marking is the use of the ® symbol, which conveys to the public that the mark is registered in the national trademark office.
Other common examples of trademark marking include the use of the “TM” symbol to denote claim of trademark rights, whether registered or unregistered, the “SM” symbol to denote a service mark, as discussed further below, or the notice "Registered Trademark" (or its translation into the jurisdiction's official language, including "Marca Registrada" or "MR" in some countries where Spanish is the dominant language, and "Marque Déposée
," "Marque de Commerce," or their abbreviations, "MD" and "MC," in some countries where French is the dominant language).
Not all jurisdictions require or provide for the use of the ® symbol or notices such as “Registered Trademark.” In fact, the matter of trademark marking may be treated differently on a per country basis, which forces trademark owners to approach the subject of packaging or labeling in a careful manner to accommodate for different national rules in each country where the mark is used.
2. What is the purpose of trademark marking?
Marking of a trademark may serve a number of purposes, such as:
a. Providing notice of the owner’s claim to ownership of the mark;
b. Distinguishing the mark from surrounding text or graphics;
c. Distinguishing the mark from another owner’s trademark when the two marks appear together on products, packaging, promotional materials, or in advertising;
d. Directing the consumer to a notice that identifies the trademark owner, thereby reinforcing the public’s association of the mark with the owner;
e. In certain jurisdictions, allowing for additional potential monetary remedies in the event of litigation against a party that is infringing the owner’s mark identified as such; and
f. Identifying a mark as registered, where an appropriate registration mark is used.
3. What do the symbols TM and SM mean, and when can I use them?
As stated above, the ® symbol indicates that a mark is registered in the national trademark office. If a mark is not registered, the symbol "TM" for "trademark" or "SM" for "service mark" is often used to indicate that, even though a mark may not be nationally registered, the owner is nevertheless claiming rights in it. The TM symbol is the recognized abbreviation for “trademark” and is usually placed after and above the mark, for example: ASTEROID™ athletic wear.
In certain jurisdictions, the SM symbol is the recognized abbreviation for the term “service mark.” It is used in the same manner as TM, but in connection with services rather than goods. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. The words "trademarks" or "marks" are commonly used to refer to both trademarks and service marks.
The use of the TM and SM designations informs the public that a word, logo, slogan, design, etc., is being used as a mark and reflects the owner's intent to claim trademark rights in the mark. However, using one of these symbols does not guarantee that the owner’s mark will be protected under trademark laws.
4. What if I do not use a trademark marking notice?
Use of the registration symbol or other notice is not mandatory in every jurisdiction, but it is important not only because it provides notice of the owner's trademark rights, but also because it may allow the owner to assert certain types of damages in lawsuits against infringers. For instance, in the United States, failure to use a registration notice limits the remedies available to a trademark owner in a lawsuit. Failure to use a registration notice may prevent a plaintiff from recovering damages and profits in a suit for infringement if the defendant is not shown to have actual notice of the registration.
Trademark marking may also help the trademark owner maintain its rights to the mark by avoiding descriptive use of the mark in advertising and labeling, which can lead to “genericide,” the process by which a mark loses its distinctiveness when consumers use the mark as the “name” of the product or service.
5. Is there any other way that I can appropriately mark a trademark or a service mark?
Yes, by using an asterisk (*) or similar symbol to direct the consumer to a footnote indicating that the mark is registered or “ is a trademark [or service mark] of [company name].”
6. Do I need to include a marking symbol repeatedly in a particular advertisement when the trademark or service mark is repeated in the advertisement?
No. Generally, it is not necessary to mark every occurrence of a trademark in an advertisement or other promotional materials. However, at a minimum, this identification should occur at least once in each piece of printed matter, either the first time the mark is used or with the most prominent use of the mark. When in doubt, err on the side of “over-marking.” Remember that apart from marking, a trademark or service mark should also be properly used (e.g., preferably as an adjective and distinguished from surrounding text by capitalization, distinct typeface, color and/or size).
A Guide to Proper Trademark Use
7. What marking issues should be known by trademark owners doing business in various countries?
In general, the requirements and consequences of using or not using symbols or indications that denote trademark marking must be ascertained on a per country basis. For country-specific information on this topic, consult Country Guides: Essential Information on Trademark Protection Worldwide
section V. Registration D. Marking Requirements, and consulting with local counsel is always advisable. Some general guidelines are below:
a. Remember that trademark rights vary from country to country. Before using a mark or asserting rights in any country, take steps to verify those rights in that country.
b. Marking should conform to any requirements of local trademark law. Logically, marking should be in the local language(s) or otherwise meaningful to the people in the country in which the products or services are advertised and sold. Many countries also recognize the use of the ® symbol to indicate a registered mark.
c. False or misleading marking with the ® symbol on international packaging can result in unfair competition claims, fines, imprisonment and other liability. In fact, in certain jurisdictions it is a criminal offence to falsely indicate a trademark or part of a trademark is registered or certain goods or services are protected by a registered trademark when they are not. Examples of jurisdictions that consider false or misleading marking a criminal offense are Germany, Brunei, India, Japan and Korea.
Marking (including footnotes) may be necessary in some situations. This includes when the mark is imprinted on products or packaging by a licensee, the products are distributed by a person other than the mark owner and the distributor’s name appears on the product or packaging, or the marks of more than one owner appear together.
Additional INTA Resources
Trademarks vs. Generic Terms
Trademark Basics: A Guide for Business
Funeral for a Brand: How Trademarks Become Generic