One of the most common questions trademark owners pose is when to use the ®-symbol, and when to use ^TM. The answer is relatively straight forward: if the mark is federally registered for a particular product, the mark can (and should) be identified with the ®-symbol when it is used in connection with those products. If the owner of a registered mark fails to use the ®-symbol, or otherwise identify the mark as being federally registered, then the owner’s ability to recover damages from infringers may be limited.

Conversely, if the mark is not registered, the owner should not use the ®-symbol. Using the ®-symbol in connection with an unregistered mark could subject the trademark owner to an action for false marking, although proving damages for this false marking can be difficult.

So when is ^TM appropriate? Anyone who believes that a term is their trademark can identify the trademark with a ^TM. There are good reasons to use the ^TM symbol: it is evidence of “attempts and intent to educate the trade and purchasing public that it regards the term . . . as its trademark for such goods.” In re Mine Safety Appliances Company, Serial No. 75/501,608, 66 U.S.P.Q.2d 1694, 1700 (T.T.A.B. 2002). However, it is well settled that use of ^TM in connection with otherwise unregistrable matter does not make such matter a trademark. Id. In Eagle Snacks, Inc. v. Nabisco Brands, Inc., 625 F. Supp. 571, 573-4, 228 U.S.P.Q. 625, 628 (D.N.J. 1985), the court noted plaintiff’s ultimately unsuccessful attempts to “strengthen” its purported trademark in HONEY ROAST, including causing the letters “TM” to be placed above the word “Roast” and implementing the use of the word “Brand” to modify the mark.

In Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 907, 35 U.S.P.Q.2d 1342, 1346 (9th Cir. 1995), successfully showed that plaintiff did not use “Paramahansa Yogananda” as a service mark in party by presenting “expert testimony that SRF did not use the term “Paramahansa Yogananda” with any of the traditional trademark indicia (e.g., use of the term with a “TM” sign next to it).

However, the use of ^TM is an admission that the term is a trademark, and thus before using ^TM a trademark owner should investigate whether the mark is in fact available. In London v. Carson Pirie Scott & Co., 4 U.S.P.Q.2d 1148, 1151 n. 1, 1987 WL 11382 (N.D. Ill. 1987), London claimed that Samsonite’s use of ^TM in connection with HANGER LOCK, would cause confusion. Although Samsonite argued that that use of ^TM was inadvertent, and had been discontinued, it was enough for the court to deny defendants’ motion to dismiss.

BOTTOM LINE: If you mark is registered, use the ®-symbol when the mark is used on any of the products or services for which it is registered. If the mark is not registered, do not use the ®-symbol, and consider using ^TM to strengthen the mark, but make sure that the mark is available, because ^TM can be an admission that a term is being used as an trademark.

In In re Siny Corp., [2018-1077] (January 14, 2019, April 10, 2019), the Federal Circuit affirmed the TTAB’s decision affirming the Examiner’s refusal to register CASALANA because the applicant failed to provide an acceptable specimen of use.

The issue on appeal was whether Siny’s webpage specimen qualified as a “display associated with the goods” under the Lanham Act. The Federal Circuit began its analysis noting that mere advertising is not enough to qualify as such a display. The Federal Circuit disagreed that the TTAB applied improperly rigid requirements, noting that the Board carefully considered the webpage’s contents and determined, on the record before it, that the specimen did not cross the line from mere advertising to an acceptable display associated with the goods.

In particular the Board relied upon the absence of information essential to a purchasing decision, such as a price or or range of prices for the goods, the minimum quantities one may order, accepted methods of payment, or how the goods would be shipped. The Board noted that “if virtually all important aspects of the transaction must be determined from information extraneous to the web page, then the web page is not a point of sale.” The Board further noted the absence of any evidence (as opposed to attorney argument) of how sales are actually made—e.g., documentation or verified statements from knowledgeable personnel as to what happens and how.

The best trademark specimens are, of course, pictures showing the mark actually applied to the product, or to the packages for the product, when these are not available, point of purchase displays, including catalogs and web pages may do, provided they really at the point of purchase and not mere advertising. The only time an advertisement would be an acceptable specimen is to show use of a service mark.