Trademarks have been around for centuries. Trademarks are a method of allowing commercial businesses to identify their goods (and services) to consumers. A trademark says to consumers: “Our business made this” or “Our business offers this service.” In general, a successful trademark identifies positive attributes to the consumer like solid craftsmanship, excellent materials, quality and product longevity.

Trademarks come into existence when the word, phrase, mark, logo or design are used. In modern commercial markets, trademarks are almost always registered, but legally, registering a trademark is not strictly required. The difference between a trademark and a registered trademark can cause confusion. To add to the confusion, in the United States, an application to register a trademark can be filed before the trademark is used. These are called “intent-to-use” applications. Here is a brief explanation of some of the common similarities and differences between trademarks and registered trademarks.

Suing for Trademark Infringement

Both types of trademarks are legally protected and owners of both types may bring trademark infringement litigation against an infringer. For either type of trademark, the trademark owner alleging infringement must prove two elements:

• Ownership of a valid trademark and
• The alleged infringer’s use of the trademark causes a likelihood of confusion in the minds of consumers

Both types of trademarks are protected from infringement under the Lanham Act. Registered are protected under 15 U.S.C. § 1114 and unregistered trademarks are protected under 15 U.S.C. § 1125(a). Legal protections for unregistered trademarks are based on the doctrines of false designation of origin and false advertising. Unregistered trademarks are also protected by many state statutes.

However, there are important differences with respect to the legal protections provided to unregistered and registered trademarks. They include:

• Unregistered trademarks are protected only within the geographic area where they are used; registered trademarks can be protected nationally even if they are only used regionally
• For registered trademarks, infringement lawsuits can be brought in federal court
• Federal registration provides nationwide constructive notice of the trademark’s existence which can help with proof of infringement
• A registered trademark becomes “incontestable” five years after registration
• The owners of a registered trademark can claim significantly enhanced damages in an infringement lawsuit

Use of Different Symbols

Per the Lanham Act, registered trademarks are entitled to use the “circle R” symbol in conjunction with the trademark. By contrast, unregistered trademarks cannot use the circle R symbol. However, owners of unregistered trademarks can place the symbol “TM” near their trademarks. Use of the “TM” symbol gives notice to any person that the word, phrase, mark, logo or design is intended to be a trademark or service mark; that is, the mark is intended to be a unique identifier for the commercial source of the goods or services being sold. The circle R symbol serves a similar “public notice” function, but, technically, the circle R symbol only signifies that the trademark in question has been registered.

If you have questions about your rights as a trademark owner or if you are facing trademark litigation, contact the proven trademark litigators at Revision Legal at 231-714-0100.