The other day, a friend was telling me about the new Lego kit he purchased. According to their website, the Hogwarts™ Castle Owlery is “the best kids’ toy to recreate the scene at the Owlery where Harry Potter™ invites Cho Chang™ to the Yule Ball, and more.” You probably noticed the three ™ symbols after the various proper names. With its cousin ®, it’s a ubiquitous part of our lives. But these symbols aren’t just ornaments, and there are rules governing their use. Think of this post as a field guide to these little heralds of intellectual property. 

What is a trademark?

The United States Patent and Trademark Office (USPTO) defines a trademark as “any word, phrase, symbol, design, or a combination of these things that identifies your goods or services.” Think of it like a sign that helps your customers recognize your products as being something unique. It also gives you legal protection for your brand and serves as a safeguard against fraud. There are two types of trademark: unregistered and registered. 

Of course, you can’t just trademark anything. It needs to be “inherently distinctive.” According to the USPTO, it should ideally fall into one of the following categories:

• Fanciful trademarks are words that are invented and are only meaningful in connection with a product or service. So, for example, if you started a company that made soothing soaps that helped people relax before bedtime, you might use Soaporific as your trademark. It’s a made-up word that would only be meaningful in the context of your products.
• Arbitrary trademarks, on the other hand, are actual words used in such a way that they have no direct connection with the associated product or service. The classic example of this is ‘apple.’ If you tried to use it in association with your apple orchard, you’d be out of luck. But Steve Jobs and Co. could use it for their computer company since apples and computers aren’t linked.
• Suggestive trademarks have nothing to do with Mae West–rather, they imply some quality of the product or service without stating it explicitly. Netflix is a good example. It makes you think of the Internet and movies but in a subtle fashion.

A word or phrase that’s simply descriptive, like using ‘colorful’ in conjunction with crayons, is unlikely to make a good trademark. The same goes for words and phrases that are generic, so ‘hat store’ probably isn’t going to work for a millinery establishment. 

Unregistered trademark ™

A common misconception is that trademarks must be formally registered to have effect. But that isn’t necessarily the case. You can establish ownership of a trademark simply by using it in connection with your goods or services. The ™ symbol is used for unregistered trademarks.

But unregistered trademarks have limitations. For example, it will only afford you protection within the geographic location in which you operate

Registered trademarks ®

A registered trademark is one that is registered with the appropriate authority. At the federal level in America, it’s the United States Patent and Trademark Office. States have their own trademark registries as well, but we’ll be focusing on federal registration. The benefits of federal registration include:

• Nationwide protection: while unregistered trademarks are limited to the places where you do business, a registered trademark can be enforced throughout the country. So if someone in another state infringes your trademark, you can sue them in federal court.
• Presumption of ownership: if you do end up suing someone in federal court for trademark infringement, the court will accept your certificate of registration as proof that you are indeed the trademark owner.
• Listing in trademark databases: the USPTO maintains a database of registered and pending trademarks. This makes it clear to everyone that you’re the owner. 
• Applying for foreign trademark registration: registering a trademark in the US doesn’t guarantee that it’ll be recognized in other jurisdictions, but it can give you a leg up should you need to apply for registration abroad. 

You can only use the ® symbol if you’ve registered your trademark.

It’s important to note, however, that the USPTO won’t enforce your trademark rights for you. If someone infringes your trademark, you’ll need to go after them in court yourself. You’ll need to be vigilant. If you aren’t proactive about countering trademark infringement, you could end up losing it. For more information about this subject, check out this post by Patricia Jander of Smith Haughey Rice & Roegge. 

Best practices for using trademark symbols in content

As content creators, you might wonder when you need to use the trademark symbols. When it comes to your own trademarks, it’s often a good idea to use them to assert your ownership. But what if you’re a blogger who needs to mention other parties’ trademarks in your content? In the US, the fair-use doctrine allows people to use other parties’ trademarks for the purposes such as news reporting, review, criticism, or parody. So if you were writing an essay on the world of Harry Potter, you’d be free to use character names and locations even if they happen to be trademarks of Warner Brothers.

The bottom line is that trademark symbols are primarily meant to be used by rights holders and generally should not be used by non-rights holders. For example, you don’t need to use the trademark symbols if you’re:

• Talking about the Star Wars Galaxy’s Edge t-shirt you bought while visiting Disneyland.
• Posting to Instagram about the delicious Frappuccino you enjoyed.
• Reviewing the Adidas Puremotion shoes you purchased.

In all three cases, your use of the trademarks would be protected under the fair-use doctrine.

Now the calculus might be a bit different if you’re using someone else’s trademark in a commercial context. Lego has inked a deal with Warner Brothers which allows them to sell officially licensed Harry Potter sets. Consequently, it’s appropriate for them to use the trademark symbols on their website to acknowledge the fact that they’re legitimately using another party’s intellectual property.

Conclusion

Trademarks play a vital role. They help business and individuals create identities and distinguish themselves from competitors. They can be either unregistered or registered, with the latter option providing more robust legal protections. The ™ and ® symbols allow you to inform others of your rights over these components of your intellectual property. But while it’s important to be mindful of them, you don’t need to be paranoid. If you’re using a trademark for the purposes of news reporting, criticism, parody, or review, you can usually freely use it without the owner’s permission, and you don’t need to tag it with the symbol. 

For more information about trademarks, check out these sites:

United States Patent and Trademark Office (United States)

Intellectual Property Office (United Kingdom)

European Union Intellectual Property Office (European Union)

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