Know-How Exchange : Branding

Paul,

With respect to Registered versus Trademarked - see the US Patent Office explanation with respect to the stronger position of Registered when protecting your intellectual property:

Use of the TM and SM symbols may be governed by local, state, or foreign laws and the laws of a pertinent jurisdiction to identify the marks that a party claims rights to. The federal registration symbol, the R enclosed within a circle, may be used once the mark is actually registered in the USPTO. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered.

The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration.

PLEASE NOTE: Several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.

Federal trademark registration has several benefits:

o Constructive notice nationwide of the trademark
owner's claim.
o Evidence of ownership of the trademark.
o Jurisdiction of federal courts may be invoked.
o Registration can be used as a basis for obtaining
registration in foreign countries.
o Registration may be filed with U.S. Customs Service
to prevent importation of infringing foreign goods.

https://www.marketingprofs.com/ea/qst_question.asp?qstID=27045

While this is not the nature of your question, it is important to point out because while you can simply use the TM symbol without registering it, the implication here is you really aren't protected.

Since we are not IP attorneys, we are marketing professionals - I would strongly advise you consider employing an IP attorney and ask the question concerning your legal position with TM versus R.

Specifically to your question, TM is generally a temporary position pending completion of the registration process. My opinion is that your marketing position is lessened continuing with TM indefinitely, as it shows that you are not committed or not financially viable or both. Most people would feel doing business with a company such as this would be risky.

That being said, there are a lot of companies out there who do not place TM or R on their logos. Two issues with this: 1) They fail to build the value of their IP and therefore their company; 2) Someone can come along and register the trademark and then prosecute them for infringement. Then, they have to spend a bunch of money changing their logo and rebuilding their brand recognition - not to mention do some damage control with their customers who may think the company is short-sighted for getting into that mess.

All-in-all, again, in my opinion, registering is better from a marketing perspective and a long term value of the company.

I hope this helps.

Wayde