Use of the “TM” symbol

As an intellectual property lawyer I’m very familiar with symbols such as TM and ®, but there’s quite a bit of confusion amongst the general public and even the business community about what they actually mean and when they should be used. In this post, I examine whether or not to use the TM symbol for trade marks which aren’t registered.

The meaning of the TM symbol

The TM symbol simply tells the world that a particular “mark” (usually a logo or a name) is being used as a “trade mark”: something which identifies and distinguishes your products or services from its competitors.

Most people assume that the TM symbol means that the mark has been registered in some way, but this isn’t the case. A trade mark with a TM symbol next to it can be a registered trade mark, but in most cases the TM will only be used for unregistered trade marks. In contrast, the ® symbol can only be used for trade marks that have been registered with IP Australia.

The TM symbol can be used next to almost any word, image or phrase that you use in the advertising or branding your products.

Why does this matter?

If you haven’t registered your trade mark you need to consider whether you put the TM symbol or not. The obvious question is: if you use the TM symbol, aren’t you just flagging to people that you haven’t got any registered rights in the trade mark?

This is an important issue to lots of different businesses. You might:

• have decided against registering your trade mark because you can’t afford it;
• be waiting to build up a track record (called “evidence of use”) before submitting your trade mark application to IP Australia; or
• have had an application knocked back but you might want to continue trading with that mark regardless.

Some things to consider

As most people don’t understand the difference between the “TM” and ® symbols, you’re not necessarily advertising that you don’t have registered rights … in fact many people will think that you do have them because they don’t understand what the TM actually means.

On the flip side, using the “TM” means you’re flagging that you don’t have registered rights to a small group in the population. Unfortunately, this group includes the more IP savvy operators such as lawyers and large competitors etc who might not be so afraid of moving aggressively against you! This might not be as bad as you might think, as (in theory) savvy operators would be able to work out that your trade mark is unregistered anyway by doing a search of the trade marks register, but it’s definitely a consideration to take into account.

The International Trade Marks Association (ITMA) web site contains the following recommendation:

Notice [through use of the TM symbol] is important because it informs others of the owner’s trademark rights and discourages them from adopting the same or similar trademarks for their products. Proper marking, therefore, helps to reserve the trademark for the owner and prevent confusion that could result if competitors use similar trademarks.

What do the big companies do?

There are heaps of examples of large, sophisticated companies who’ve chosen to use the TM symbol for unregistered trade marks and vice versa. The fact that there’s no single approach that can be considered to be “best practice” is illustrated by Citysearch and Just Listed, two subsidiaries of Telstra Limited, which have each taken different paths:

What do I advise my own clients?

If my clients are using marks that aren’t obviously trade marks, I definitely advise them to use the TM symbol. For example, the Australian electronics and white goods retailer, The Good Guys, has registered the phrase “Pay Less Pay Cash”. Before that was registered, I would have advised them to use the TM symbol next to the phrase because many people might mistakenly have thought that this phrase was simply a piece of advertising copy rather than a trade mark.

This argument isn’t so clear cut when the trade mark is actually the name of my client’s business or a product. Here, most people should know that the mark is a trade mark. I generally advise them to use the TM symbol in light of the following factors:

• most people will assume that the mark is registered when they see the TM symbol, so it’s a very effective assertion of your rights;
• if you don’t use the TM symbol, it wouldn’t take very long for a savvy operator to work out that your trade mark isn’t registered anyway (it’s just a matter of doing a search of the trade marks register on the Internet);
• if you do use the TM symbol, many savvy operators (including me … if I could call myself that) would steer clear of that trade mark when considering names for competitive offerings. To me, there would be no point steering

I’m happy to recognise that it’s a “line ball” decision, and ultimately it comes down to your own assessment of the risks and benefits.