® MARKS THE SPOT – OR IS IT ™?

Many business owners wonder “Should I be using the ™ symbol or the ® symbol beside my trademark?” Surprisingly, unlike in the United States, there are no “marking” requirements for trademarks under the Canadian Trademarks Act. However, proper marking is an extremely important method of notifying consumers that you are using a certain word or symbol as your trade-mark and can prevent third party infringement, as you are effectively putting third parties ‘on notice’ that the trademark belongs to you. Many trademark owners use symbols purely as a deterrent.

The ™ symbol may be used on registered and unregistered trademarks. So, by using the™ symbol, all the owner is doing is indicating to third parties that they are using the words or design in question a trademark – it does not tell anyone whether that mark is registered or unregistered. A ™ designation just means that the user of the trademark asserts that the word, phrase, design, or whatever it is, is a trademark owned by the user. Anyone can assert that anything is their trademark, but that does not necessarily mean that the user has exclusive rights to that mark.

The Registration symbol, ®, is a powerful symbol, but should be used with caution, and only when registration has been obtained in both Canada and the US. If you can be sure that the only use of your trademark is entirely within Canada, then use of the ® symbol is fine. However, the US has very strict marking rules, so if some of your use spills over into the US market (which can be very hard to predict), then it is safer to use the ™ symbol until you have a US registration as well as a Canadian one, and once you have a US registration, using the ® symbol is mandatory in the US market.

That all being said, many businesses prefer to continue to use the ™ designation, even when they have a registered trademark because of the costs associated with re-printing their marketing material or packaging. The important thing is that the trademark is marked with one or the other. It does not matter which symbol you use, taking into consideration the marking rules in the US, as long as you do not misuse them (for example, by using the ® symbol for an unregistered trademark).