R in a circle or TM?

While on a recent holiday in Brugge, Belgium and while I should have been enjoying the chocolates, mussels and beer, I couldn’t help but stop to take some pictures of the branding at the local McDonalds.  The reason is because I am often asked whether you should use an ® or a TM next to your name or logo, whether you have to use one of the other, what they mean and why they matter.  You can see the confusion especially when big brands such as McDonalds seem to use them interchangeably.  The Brugge branch, as you can see use TM on the sign on the front of their shop and an ® on the inside of their front door.

So here is the answer, you can use TM wherever you want but you should only use  ® next to a trade mark that has been registered.  It most countries, including the UK, it is a criminal offence to misuse ® and you risk being filed and being told to remove the ® from your products, branding and marketing literature if you do not use it next to a registered mark.  The reason that this is taken seriously is because possessing a registered trade mark gives the owner a lot of rights including the right to prevent anyone from using the same or a similar mark for the same or similar goods or services.  By using the ® you are claiming that you have these rights which, if you don’t, may unfairly deter competitors.

If you can use the TM does that mean that it is essentially “Totally Meaningless”, as I have heard some people say?  I don’t believe so.  There are occasions when it is not possible to obtain a registered trade mark and this situation may change if it becomes well known and associated with your product and service (i.e. it becomes or acquires distinctiveness).  By using TM next to your unregistered marks, you are informing the world that you would like them to treat the mark next to it as a trade mark and this in itself makes it more likely to acquire distinctiveness.  Even if you can never obtain a trade mark, using the TM next to your unregistered marks might be useful should you ever have to use passing off as it makes it easier to show that there is “goodwill” in your mark.

Why, I hear you ask, would McDonalds choose to use a TM on the front in the front of their shop when their “Golden Arches” trade mark is registered and they could have used an ®.  Well there is nothing to stop them and it may be felt that the average consumer may associate TM more with a trade mark than ®.  You may also find it useful to use TM on packaging or your products instead ® even if you have a trade mark registered in the UK when there is the possibility that you may make some overseas sales.  If you only have a UK registered trade mark and make a sale to the USA then you would be breaking USA laws to sell your product containing ® on the product or packaging and this means that you may need to get your packaging reprinted if you have chosen to use ® excessively.

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