“Should I Register My Trademark?”




This section of the TMEP  (USPTO Trademark Manual of Examination Procedure) is copied from https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1e1285.html.


TMEP 906    Federal Registration Notice

The owner of a mark registered in the United States Patent and Trademark Office may give notice that the mark is registered by displaying with the mark the words "Registered in United States Patent and Trademark Office," the abbreviation "Reg. U.S. Pat. & Tm. Off.," or the letter R enclosed within a circle, ®.  15 U.S.C. §1111.

The registration symbol should be used only on or in connection with the goods/services/collective membership organization listed in the registration.


The federal registration symbol may not be used with marks that are not actually registered in the USPTO.  Even if an application is pending, the registration symbol may not be used until the mark is registered. [Emphasis added]


Registration in a state of the United States does not entitle a person to use the federal registration notice.   Du-Dad Lure Co. v. Creme Lure Co., 143 USPQ 358 (TTAB 1964) .

A party may use terms such as "trademark," "trademark applied for," "TM" and "SM" regardless of whether a mark is registered.  These are not official or statutory symbols of federal registration.


TMEP 906.01    Foreign Countries That Use Registration Symbol ®

In addition to the United States, several countries recognize use of the symbol ® to designate registration.  When a foreign applicant’s use of the symbol on the specimens is based on a registration in a foreign country, the use is appropriate.

The following foreign countries use the ® symbol to indicate that a mark is registered in their country:

Belgium

China (People’s Republic)

Costa Rica

Denmark

Ecuador

Germany

Guatemala

Hungary

Luxembourg

Netherlands

Nicaragua

Poland

Sweden


TMEP 906.02    Improper Use of Registration Symbol

Improper use of the federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud.   See TMEP §906.04.  However, misunderstandings about use of federal registration symbols are more frequent than occurrences of actual fraudulent intent.  Common reasons for improper use of the federal registration symbol that do not indicate fraud are:

Mistake as to the requirements for giving notice (confusion often occurs between notice of trademark registration, which may not be given until after registration, and notice of claim of copyright, which must be given before publication by placing the notice © on material when it is first published);

Inadvertence in not giving instructions (or adequate instructions) to the printer, or misunderstanding or voluntary action by the printer;

The mistaken belief that registration in a state or foreign country gives a right to use the registration symbol ( see Brown Shoe Co. v. Robbins, 90 USPQ2d 1752 (TTAB 2009) ; Du-Dad Lure Co. v. Creme Lure Co., 143 USPQ 358 (TTAB 1964) );

Registration of a portion of the mark ( see Coca-Cola Co. v. Victor Syrup Corp., 218 F.2d 596, 104 USPQ 275 (C.C.P.A. 1954) );

Registration of the mark for other goods ( see Duffy-Mott Co. v. Cumberland Packing Co., 424 F.2d 1095, 165 USPQ 422 (C.C.P.A. 1970) , aff’g154 USPQ 498 (TTAB 1967); Meditron Co. v. Meditronic, Inc., 137 USPQ 157 (TTAB 1963) );

A recently expired or cancelled registration of the subject mark ( see Rieser Co. v. Munsingwear, Inc., 128 USPQ 452 (TTAB 1961));

Another mark to which the symbol relates on the same label ( see S.C. Johnson & Son, Inc. v. Gold Seal Co., 90 USPQ 373 (Comm’r Pats. 1951)).

See also Sauquoit Paper Co. v. Weistock, 46 F.2d 586, 8 USPQ 349 (C.C.P.A. 1931); Dunleavy Co. v. Koeppel Metal Furniture Corp., 134 USPQ 450 (TTAB 1962) , aff’d, 328 F.2d 939, 140 USPQ 582 (C.C.P.A. 1964); Radiant Mfg. Corp. v. Da-Lite Screen Co., 128 USPQ 132 (TTAB 1961) ; Tobacco By-Products & Chem. Corp. v. Smith, 106 USPQ 293 (Comm’r Pats. 1955), modified243 F.2d 188, 113 USPQ 339 (C.C.P.A. 1957).


TMEP 906.03    Informing Applicant of Apparent Improper Use

If a specimen in an application shows the federal registration symbol used with the mark that is the subject of the application, or with any portion of this mark, the examining attorney must determine from USPTO records whether or not such matter is registered.  If it is not, and if the symbol does not appear to indicate registration in a foreign country ( see TMEP §906.01), the examining attorney must point out to the applicant that the records of the USPTO do not show that the mark with which the symbol is used on the specimens is registered, and that the registration symbol may not be used until a mark is registered in the USPTO.  The examining attorney should not require any explanation or comment from the applicant concerning the use of the symbol in relation to the mark.


TMEP 906.04    Fraud

Improper use of the federal registration symbol, ®, that is deliberate and intends to deceive or mislead the public or the USPTO is fraud.   See Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Wells Fargo & Co. v. Lundeen & Assocs., 20 USPQ2d 1156 (TTAB 1991) .

The examining attorney may not issue a refusal of registration based on fraud.  If it appears to the examining attorney that fraud on the USPTO has been committed, the examining attorney must follow the procedures outlined in TMEP §720.
































One reason to register your trademark? You want to AIM  HIGHER® and you want to protect your investment and goodwill.



Not Just Patents ® and Aim Higher® are federally registered trademarks of Not Just Patents LLC for Legal Services.


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Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

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Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

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State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

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Opposition Pleadings    UDRP Elements    


Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

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Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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