What Is the Circle-R ® Logo and When Should You Use It?

I get this question about the trademark symbol a lot. Understandably so – you work hard to create your brand and want to make sure you are taking all the right steps to protect it.

You may be relieved to know that trademark designations have no actual legal value, so failure to use one will not put your brand at risk. Heads-up though, using one incorrectly can create issues.

Before we dive into that, let’s take a quick look at the different Trademark designations and what they mean.

“TM”: TM stands for “Trademark,” which is a name or logo associated with your goods or services. Since trademark rights begin the moment you start selling with your brand, you are free to use the TM designation right away. 

“SM”: SM is short for “service mark” and is a great designation to use with services. Services are things like accounting or dentistry, rather than, say, apparel or children’s toys. The same rules for apply here – you are free to use it as soon as your brand is live.

Circle-R or “®”: The Circle-R or “®” means that the trademark is registered. It can only be used for trademarks that are registered in the United States Patent and Trademark Office (USPTO), or a limited number of countries that use the Circle-R logo for their registrations. A state registration does not qualify. It is important to note that it can only be used on the goods or services listed in the registration. You can also use this as the copyright symbol, to show that you own a copyright.

“Registered in United States Patent and Trademark Office," or the abbreviation "Reg. U.S. Pat. & Tm. Off.": These are a less popular way of representing that you have a registration. Just like the Circle-R, these can also only be used on registered trademarks. Unlike the Circle-R, these designations are for USPTO Registrations only.

While using any of the registration designations on an unregistered trademark is a big no-no, it can happen rather innocently. Some owners of unregistered trademarks use the Circle-R to make their brand look more official. Other times, they might not know there is a difference between a trademark application and registration. This is certainly understandable, but using the registration designations with the intention of misleading consumers is not taken lightly by the USPTO. In fact, it is defined in their rules as fraud. So be sure to use the “TM” or “SM” until you have the registration in-hand. 

This can come up during the application process, where trademark owners are required to submit drawings of their logo or images of their brand in use. When submitting anything to the USPTO, Applicants and trademark practitioners should not only keep an eye out for that pesky Circle-R, but they should look out for any other designations too. Examining Attorneys will kick back logo drawings that include any designation, because the USPTO wants a clean copy of the trademark for examination and for the application file.

With all these caveats for trademark designations, why should you bother using one? Well, they serve as a deterrent - they put competitors and the public on notice that you have rights to your trademark, and that you are serious about enforcing those rights.

Once you have chosen the right designation for your trademark, adding one to your marketing is simple – you can technically put a designation anywhere. Style wise, it is usually placed on the right of a brand, in normal text or superscript.

Overview and Timeline of the USPTO Trademark Application Process

Submitting an application for Registration of a trademark to the United States Patent and Trademark Office (“USPTO”) is more involved and time-consuming than most first-time applicants realize. Here, we will outline what to expect, so that you can plan ahead as you develop your brand.

The trademark application process usually takes anywhere from roughly one year to a few years.(1) The timeline all depends on what issues, if any, arise.

Trademark applications include a few crucial elements: 1) information about the mark, 2) a description of the goods or services used in association with the mark, 2) information regarding the owner, and 4) a showing of use of the mark.

Once submitted, your application will enter the legal examination phase. During this stage, the USPTO will first review the application for basic sufficiency. After a few months, your application will be assigned to an Examining Attorney, who will spend an additional few months conducting a legal examination.(2) In addition to looking at the application itself, the Examining Attorney will search the USPTO database for similar trademark registrations or applications that predate yours. The entire legal examination process takes about 10 months, after which the USPTO will either issue an approval of your application or an Office Action.

There are a few common reasons that an Examining Attorney would reject an application. For instance, they might determine that the description of the goods or services is too vague and provide suggestions for the applicant to adopt. Other types of rejections are for substantive legal issues, such as where a mark is “merely descriptive” or there is a “likelihood of confusion” with an existing registration.(3) Applicants will have the opportunity to respond to Office Actions up to six months after issuance.(4) There is no option to extend that deadline and failure to respond will result in the application being abandoned.(5)

If the Examining Attorney allows your application, either after their first legal examination or after reviewing a response to an Office Action, the application will move to the next step.

At that point, your application will be subject to a brief secondary review and then placed in the publication phase. Publication is a process where the USPTO posts your trademark application in their Gazette for 30 days. During this time, third parties will have the opportunity to step forward and oppose your mark based on certain legal grounds. The most common reason for an Opposition is where that third party believes there is a likelihood of confusion with their trademark, which may or may not have come up in the Examining Attorney’s database search.

Intent-to-Use application are subject to an additional step after the publication phase. For intent-to-use applications, you do not need to show use of the mark at the time of submission, but you still have to show use prior to registration.(6) So, after an Intent-to-Use application passes publication, the USPTO will issue a “Notice of Allowance.” This requires applicants to submit proof that the mark is in use, or to file an Extension of Time, within six months. Up to five extensions are allowed, adding up to no more than three years. An intent-to-use application is a good idea where you have immediate plans to develop your brand and want assurance that your mark is secure.

If no issues arise, about three months after approval for publication, your registration will issue and the USPTO will mail the official Registration Certificate.(7)

After registration, the USPTO will require you to submit regular maintenance filings. The first of such filings is due between the fifth and sixth years after registration, then ten years after registration and every ten years after that. Maintenance filings require registrants to show that their mark is in use for each one of the goods and services listed in the registration. These deadlines are non-extendable and failure to file maintenance will result in your registration being abandoned.

Small issues can turn into bigger ones when filing applications for registration of a trademark in the USPTO, so best practice would be to hire a qualified attorney to prepare and submit the application on your behalf. If you do choose to file yourself and end up with a rejection, don’t give up before asking for a second opinion! Some rejections might seem hopeless, but can be fixed by an experienced practitioner.

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(1) The goods news is, that soon as you file, the public will be on alert that the trademark has been applied-for. So, you idea is pretty safe the moment you file an application.

(2) Sometimes, the delays are longer for trademarks that have been selected to examine in a group, or if they were marked as referring to something illegal (a common example would be applications that reference marijuana).

(3) A 2(e)1 rejection is that a mark is “merely descriptive” of the goods and services included in the application, like an application for the mark “creamy” for a yogurt brand. A 2(d) rejection is for marks where there is “a likelihood of confusion” with your mark and a registration or application that already exists.

(4) In some rare instances, responses are due in 4 months, so it is best to check the deadline set forth in the introduction of the Office Action.

(5) There are some ways to resuscitate an abandoned application, but the grounds are limited and subject to a strict timeline (an example would be if you did not receive the Office Action and can attest thereto).

(6) All applications, unless based on a foreign application or registration, must show use prior to obtaining a registration in the United States.

(7) All communications will go directly to your attorney or the correspondence address listed.

The Importance of Using Your Trademark in the United States

The very foundation of trademark rights in the United States is use. In fact, the first line of The Trademark Act states that “the owner of a trademark used in commerce may request registration of its trademark …” (1).  In essence, Applicants must show use in order to be entitled to registration. 

There is an exception for applications based on foreign trademark filings (2). Applicants filing under 66(a) or 66(b) through the Madrid Protocol or 44(d) and 44(e) claiming priority of a foreign Application or Registration, do not have to allege use prior to obtaining a registration. 

While applications based on foreign priority can register without showing use, all Registrants must prove use periodically through required maintenance and renewal filings. The first maintenance filing is due between the fifth and sixth year after registration, and the next is due between the ninth and tenth year of registration and then every 10 years after that. 

The maintenance requirements are two-fold.

• First, Registrants must submit a Declaration of Use (the “Declaration”), attesting that the trademark is in use in the US for each one of the goods and services listed in the Registration. The Declaration is required to feature certain wording and must be signed by an individual with first-hand knowledge of that use (3). Any good or service not in use should be deleted. All claims made in the Declaration require signatories to swear under penalty of perjury that the allegations are true. 

• Second, trademark owners must submit one Specimen of Use for each class of goods or services (4). Specimens are subject to specific legal requirements as they serve as evidence that the trademark is in use. Specimens for goods tend to be photographs or digital images that show the mark in use in conjunction with the goods, whereas Specimens for services tend to be advertisements that show the trademark and make a clear reference to those services. More on what constitutes an “acceptable” Specimen here.

Generally, after submission of the maintenance filing, a USPTO Examining Attorney will review it, and either issue an acceptance or rejection. Sometimes, however, they will issue an Audit, which includes a request for Proof of Use on a random selection of goods or services (5). Note that Proof of Use is not the same as a Specimen. If the Registrant is unable to present acceptable Proof of Use, the Examining Attorney will issue a second request for Proof of Use for each of the goods and services listed in the Registration. Deadlines for responses are 6 months after issuance, but sometimes only 30 days.

This process can catch some Registrants off guard, especially Foreign Registrants, who have registered and maintained their US Registration for a number of years without issue. Unfortunately, the USPTO must have noticed this, because they have issued a disproportionately large amount of Audits on Registrations based on foreign priority.

Not only can this turn the maintenance process until a months-long ordeal, it also has other consequences. While the USPTO is not yet enforcing the audits punitively, making a false Declaration of Use is nonetheless considered fraud on the USPTO. Additionally, lack of use of a trademark is considered abandonment if it goes on for three or more years. If you have effectively abandoned your trademark, a third party can petition to have your Registration canceled for those goods or services by filing a Petition to Cancel through the Trademark Trial and Appeal Board (“TTAB”). More on the TTAB here. In such a proceeding, having a blatant error or misstatement that is discovered through the Audit process will not present well to the TTAB. 

There are certain steps that Registrants can take to prevent issues from arising during this process. Best practice would be to conduct a thorough investigation before making any claims that your trademark is in use. If you find that any of the goods or services are not in use, delete them. If in the future you begin using that trademark for those goods or services, you can file another application.

Practitioners of trademark law also need to be aware of the importance of use in the US, so they can warn and educate their clients.

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1 “Use in commerce” is defined as commerce between nations and commerce between two or more US states. The Lanham Act defines “use in commerce” as commerce that may be regulated by congress. Per the US Constitution, Article 1, Section 8, Clause 3, also known as the Commerce Clause, congress can regulate interstate commerce, commerce between nations and commerce with Native American Tribes.

2 Foreign applicants, do, however, have to allege that they have a “bonafide intent to use” the mark in US commerce.

3 An individual with first-hand knowledge would either be the individual registrant or a representative of a corporate registrant

4 For example, if you had a registration in Class 25 for “t-shirts; pants; athletic tank tops,” it would be sufficient to submit a specimen that only included t-shirts. for one good and/ or service in each class

5 For instance, the USPTO might respond to the maintenance filing in the example given above, with an audit requesting a Specimen for pants and athletic tank tops.

Elon Musk and the Farting Unicorn

In February 2017, Elon Musk took to social media with a photograph of a mug designed by Colorado potter, Tom Edwards. Mr. Musk tweeted that the mug, which features a unicorn farting electricity, might be his “favorite mug ever.” Naturally, the Tweet caused a boost in sales of the mug.

Not long after his initial post, the Tesla founder followed-up with another Tweet of a strikingly similar farting unicorn design. This time, the image had been drawn on a Tesla sketch pad, which the post was intended to promote. By the end of the year, the electric car company had incorporated the image as an icon into Tesla’s operating system and even featured it in their company holiday cards.

At no point in all of this did Mr. Edwards provide permission, or receive compensation, for the use of his art. When Mr. Edwards (and his daughter) publicly expressed disappointment, Mr. Musk responded by tweeting, “he can sue for money if he wants, but that’s kinda lame. If anything, this attention increased his mug sales.”

Mr. Edwards did ultimately hire an attorney. He explained that it was more about standing up for artists in general than recouping funds for himself. Despite Mr. Musk’s open flippancy, he eventually reached an agreement with Mr. Edwards.

This “misunderstanding” (Mr. Edward’s words) brings up two points worth addressing.

First, this example really shows how “cut and dry” copyright infringement can be. Even though sales of Mr. Edwards mug increased with the attention garnered by Mr. Musk and Tesla’s infringements, they were still infringements.

Second, this is a good example of a local artist struggling to hang onto their intellectual property. Protecting IP is proving especially difficult in the internet age. Often, after promoting their work on social media or selling it on sites such as Etsy.com, they find larger companies taking their art and mass producing it. The idea of taking on one of these companies in court and incurring exorbitant legal costs can seem daunting. Luckily, many IP attorneys are creating fee arrangements where, rather than charging hourly, they will only get paid if the artist does. Plus, most of these cases settle. In fact, a lot of the time, all it takes it a Cease and Desist letter and a couple of phone calls between the attorneys to bring it to a close. If you ever find yourself in this unfortunate position, keep this in mind.

A photograph of Mr. Potter’s mug.

USPTO Trademark Applications: How to Determine First Date of Use & Select the Right Specimen OF USE

To successfully register a trademark with the United States Patent and Trademark Office (USPTO), the trademark must be actively used in commerce. The USPTO requires that a brand name is being used to sell a product or service before it can qualify for registration. As part of the application process, a trademark Application must include the first date of use of the trademark and submit a Specimen of Use. For 1(a) applications, this information is provided along with the application. For 1(b) applications, this is provided along with the Declaration of Use, after a Notice of Allowance is issued. In this guide, we will discuss how to successfully show the USPTO that your trademark is in use in US commerce, by using the correct first date of use, and selecting a sufficient Specimen of Use.

To Clarify this process, we have compiled a list of acceptable specimens of Use

Acceptable Specimens for Goods

For goods, an acceptable Specimen of Use is typically a photograph or digital image showing the trademark as it appears in commerce. Examples include:

• A label, tag, or decal affixed to the product.

• A label or tag hanging from the product.

• Product packaging, boxes, or shipping containers displaying the trademark.

• A point-of-sale display featuring the mark alongside the product.

• A packing slip or packaging materials that include the trademark.

• A catalog order sheet with an image of the product, the trademark, pricing, and purchasing instructions.

• A screenshot of a webpage displaying the product, the trademark, pricing, and a "cart" icon.

• A photograph of a frame from a movie or video that prominently displays the trademark.

• If the product is downloadable software, a screenshot showing the trademark alongside purchase instructions and a download link.

• A truck featuring the mark that ships the goods.

• An instruction manual with the trademark included in product packaging.

Acceptable Specimens for Services

For services, an acceptable Specimen of Use typically consists of advertising or marketing materials that clearly reference the services being offered. Examples include:

• Website pages advertising the services.

• Print advertisements in magazines, newspapers, journals, or phone directories.

• Marketing brochures, direct mail ads, flyers, and posters.

• Business signage on storefronts or vehicles.

• Invoices or proposal letters bearing the trademark.

• Menus (for restaurant services).

• Business letterhead, stationery, or business cards.

• Trade show demonstration materials.

• Showroom displays.

• Billboard advertising.

• Radio and television advertisements.

• Branded promotional items such as T-shirts, hats, coffee mugs, calendars, pens, and buttons.

Before submitting a Specimen of Use, double-check this list—if your specimen isn’t listed, it may not be accepted by the USPTO.

While selecting, preparing, and submitting a Declaration of Use and Specimen of Use can require effort, working with an experienced trademark attorney can streamline the process and help avoid application rejections.

Understanding the First Date of Use in a USPTO Trademark Application

The First Date of Use in a USPTO trademark application refers to the date the trademark was first used in connection with the goods or services listed in the application. This includes the date it was first used in advertising, packaging, sales, or other commercial activities.

To qualify for federal trademark registration, applicants must also provide the First Date of Use in Commerce, which refers to the first time the trademark was used in interstate or international commerce—that is, commerce regulated by the U.S. Congress. According to the Commerce Clause of the U.S. Constitution (Article 1, Section 8, Clause 3), Congress has the authority to regulate interstate commerce, international trade, and commerce with Native American Tribes.

With today's digital economy, proving "Use in U.S. Commerce" is easier than ever. Many goods are now sold online, and services are offered virtually, making interstate commerce easier to establish.

Accurately reporting the First Date of Use is critical, as submitting false information can lead to trademark rejection or cancellation. To ensure compliance, trademark owners should keep detailed records of first use, including dated advertisements, invoices, and product packaging that displays the mark.

Final Thoughts

Navigating the USPTO trademark application process requires careful specimen selection and accurate date of first use reporting. Missteps can lead to delays, refusals, or even cancellation of the mark. Working with an experienced trademark attorney can provide guidance and ensure compliance with USPTO regulations.

Need help securing your trademark? Contact a trademark professional today to protect your brand and streamline your USPTO application process.