When ® Should and Should Not Be Used
People like to pour a liberal sprinkling of the symbol ® onto all advertising and packaging, whether or not there is a legal basis for doing so.
In the United States, a registration symbol properly is used only to give notice that a trademark has been federally registered.
Registration notices need not pop up every place the registered mark appears. It is enough to use a notice once with the first or most prominent use of the mark, and it is desirable to use a notice in advertising as well as on packaging.
The proper form of registration notice is ® placed in immediate conjunction with the registered mark. Alternative forms of registration notice, which may appear as a footnote with an asterisk placed next to the registered mark, are 'Registered in the U.S. Patent and Trademark Office,' 'Registered in U.S. Patent Office,' 'Reg. U.S. Pat & Tm. Off.' or 'Reg. U.S. Pat. Off.'
Under the law, everyone is deemed to have constructive notice of federal trademark registrations. This means that no infringer can escape liability merely because it had no actual knowledge of a trademark registration. And this is true whether or not the registrant has used a registration symbol.
But if a registration symbol is used, the registrant can get damages or profits for past infringement without having to prove that the infringer had actual notice of the registration. In other words, the registrant's failure to use a notice may limit relief solely to an injunction against future infringement, and any monetary recovery for past infringement may be limited to the period after the infringer had actual specific notice of the registration.
For example, although a federal district court had awarded about $70,000 in damages for infringement of a sinuous stitched seam that had been registered as a trademark for a footbag, the appellate court vacated this award because the registration symbol, used in conjunction with the registered word mark 'Hacky Sack,' did not also give adequate notice of the registration of the seam mark.
There are some practical advantages to the use of a registration notice. If a term is somewhat suggestive of the goods or services for which it is used, the notice clearly shows that the term is being used as a trademark, not merely as a descriptive or general term. Similarly, the notice may inhibit a widely misused mark from becoming a generic term. Another advantage to the notice, of course, is that it may deter potential infringers.
On the other hand, when a registration notice is improperly used, the trademark owner may lose the right to register the mark in the U.S. Patent and Trademark Office, and it may even lose the right to get an injunction against an infringer.
There are four principal types of improper use:
First, a registration symbol obviously should not be used with a word or device that has not been registered as a trademark in the Patent and Trademark Office. The filing of an application does not carry the right to use a registration symbol; the registration actually must have been issued.
Second, a registration symbol should not appear in a location that could apply to unregistered as well as registered marks.
Third, such a symbol should not be used in connection with goods for which the mark has not been registered, even though it may have been registered for related goods.
Fourth, when the mark appears in a form of display different from the registered form of display, a registration symbol should not be used. If the mark was registered in block letters, however, the registration is considered to cover the mark regardless of its form of display.
Since use of a registration notice is optional in the first place, and since unfortunate consequences may result from its misuse, care should be taken to use registration notices properly. Intentional deception, of course, is not tolerated. In a case in which a notice was placed on a label centered beneath a registered design and a word for which registration had been refused, and in another case in which a notice was used with a trademark for suits when the mark only had been registered for fabric, the right to recover on the ground of trademark infringement was lost.
But it appears that both the Patent and Trademark Office and the courts bend over backwards to excuse 'honest mistakes.' For example, misuses were held not to be fatal in cases in which they resulted from a printer's error, an inadvertent mistake by an elderly employee, the mistaken belief that a state registration bestowed the right to use a registration notice, or even continued use of a registration notice after the federal registration had expired.
Although the ® has become increasingly recognized as an indication of the registered status of a trademark in countries around the world, it has not been officially sanctioned as proper registration notice by many nations. In French-speaking nations, for example, the preferred reference is: 'Marque Deposee' and, where Spanish or Portuguese is the official language, 'Marca Registrada' is the preferred term, although, in some, the abbreviation 'M.R.' is also acceptable.
It is particularly important to keep this in mind since there are a few countries where the owner of a registered trademark is required to give proper notice to the public if its mark is registered. When labelling is prepared for any country, therefore, the local marking requirements should be carefully reviewed beforehand.
For unregistered marks, the practical advantages offered by a registration notice also may be obtained by using informal trademark notices, such as 'TM' (meaning trademark) or an asterisk with a footnote such as 'Trademark of XYZ Company.' Informal trademark symbols sometimes appear in a circle, although care should be taken to make the circled letters clear so that informal notices are not mistaken for registration notices.
Informal trademark symbols should not be confused with the following other frequently used symbols:
The letter 'C' in a circle may be used as part of a statutory copyright notice, but it generally has no legal effect at all when it appears in conjunction with a trademark.
The letter 'P' in a circle appears on a phonograph records and pre-recorded tapes and CD's as part of a notice that the sound recording is copyrighted, but it also has no significance regarding trademarks.
The letter 'U' in a circle is really a form of 'OU,' the registered certification mark of the Kosher Certification Service of the Union of Orthodox Jewish Congregations of America (known as the 'Orthodox Union'), indicating Kosher products and services that have been rabbinically supervised under contractual agreement (sometimes next to a 'P' to indicate Kosher for Passover).
The letter 'K' in a circle is a registered certification mark of Rabbi Bernard Levy, doing business as O.K. Laboratories, also indicating Kosher products. And the plain letter 'K' is another symbol occasionally used on products claimed to be Kosher.
When a registered trademark appears on a product, a registration notice should be used with the first or most prominent mention of the mark both on the product itself and in advertising for it. Failure to use a registration notice when its use is proper, and improper use of such a notice, can weaken the trademark owner's rights. Informal notices may be used with unregistered marks, but they should not be confused with registration notices or with other types of notices.
In general, a lighter touch in the sprinkling of ® may actually improve the strength of trademark rights.
Copyright 2001, Cowan, Liebowitz & Latman, P.C.
For more information, please contact William M. Borchard
at (212) 790-9290.