Question:
Hi Jennifer,
Can I use ™ even if my mark isn't registered with USPTO?
Thanks,
Dr. L
Answer:
Yep. ™ is one of those droll instances, where on it's face the insignia is counterintuitive to reality - ™ actually means, "Hey, here I am! This is mine!", but in reality, there has been no real clam of ownership. No filing is necessary. The world has not been put on any particular notice, apart from the use, and the owner is claiming what is known as "common law" ownership rights.
Whereas, the ® symbol can only be properly used by a recipient of an approved USPTO trademark filing, which, when given, gives the user credibility that their mark is their own, and accepted across the land (America) as their mark - a stakeholder claim.
Okay, I know what you are thinking...™ must stand for "trademarked" - no. It stands for "look at me I didn't register with USPTO." ® means "registered" and accepted as the registrants mark on a federal level.
So, who wins? Let's use an example, and of course, with all things law, I will not have a final answer, because "it's a gray area..." Ex. I have been use Apple Medical (for example) for many years, and i have the cutest apple with a worm and 3 leaves, and my apple is purple and I have a ™ on my apple and the apple is posted on my website and all of my marketing materials. I recently received a cease and desist letter from an apple orchid using the same picture of the same apple, claiming they use ® and have a federal trademark. Do I have to stop using my apple? Not necessarily - you are using in a different space and have common law rights, you may predate their filing/use, and may very well prevail. Facts and time will tell.
Unfortunately, trademark is one of those areas where expense may be incurred as "cost of doing business" should you run up against a competitive claim. If for no other reason, you may want to consider always preventatively filing USPTO protection on any new mark to avoid a future claim on "confusion" (the claim made by potential infringee). Filing protection is definitely cheaper than defending against an infringement claim.
Reminder: Never use photos found online or “stock” images unless you have confirmed you hold the rights to use them or that they are genuinely free to use. Doing otherwise is an easy way to draw a cease-and-desist demand from large image vendors such as Getty.
