As the global nature of the economy and business grows, companies are faced with the challenge of determining when, whether and how to provide notice of trademark rights on product packaging and advertising materials. The laws governing use of notice symbols (or “marking”) and consequences for improper use vary, sometimes greatly, by jurisdiction. The consequences range from claims of false advertising to fines and other criminal penalties. In order to reap the benefits of proper marking and avoid penalties for inadvertent misuse, brand owners should ask themselves the following questions:
When do I use the “TM” verses “®” symbol?
In the United States, the general rule is the “TM” (and/or “SM”) notice symbols may be used next to a mark at anytime (before or after registration) the mark is used in connection with a good or service. Using “TM” puts the public on notice that you are claiming rights in the mark and is meant to dissuade others from adopting the same or similar marks for the same or similar goods or services. Once a U.S. federal registration is issued, the ® notice symbol may then be used (but only in connection with the goods or services covered by the registration and only so long as the registration is valid). While use of the ® symbol is not required, it is important and provides significant benefits. In the event that a registrant files a trademark infringement suit against an infringing party, use of the ® symbol can be used to prove the infringer had constructive knowledge of the registration (thereby allowing the plaintiff to recover lost profits and monetary damages as provided in 15 U.S.C § 1117). Thus, once a mark is granted federal registration, the brand owner should perform a cost/benefit analysis: does the benefit of potentially receiving lost profits and monetary damages outweigh the cost of repackaging and updating advertising materials? The answer is generally yes, however the updating of materials can be done progressively as materials are depleted and re-ordered.
What are the potential risks of misusing the ®?
What happens to the brand owner who jumps the gun and uses the ® before a mark is registered? Use of the ® with an unregistered mark or for unregistered goods/services can give rise to a claim of false advertising. However, the greater risk is that an infringer could raise the misuse as a basis for an equitable defense in response to an infringement claim. Further, if the misuse is clearly intended to deceive consumers or competitors, the USPTO can use this as a basis for rejecting the application. Brand owners should familiarize themselves with U.S. marking guidelines to avoid these situations.
OK, I understand U.S. notice requirements. Now we’re going to ship our product to Japan!
The laws governing use of trademark notice symbols vary by country, in both the benefits of use and the penalties for misuse. Understanding the specific jurisdictional guidelines is an important step before a brand owner expands globally. Most significantly, it is key to remember that if a U.S. registration is granted then the product packaging may legally display the ® mark…for distribution in the U.S. If the product is then sold in a foreign jurisdiction, brand owners must conform marking to the requirements of local trademark law. Ideally, marking should be in the local language and easily recognized by the consuming public. Following local guidelines is especially important, as improper or misleading marking in foreign jurisdictions may lead to claims of unfair competition, fines, imprisonment or other liability. Examples of countries where misleading marking is considered a criminal offense include Germany, Saudi Arabia, India, Japan and South Korea. In addition, footnotes may be required in connection with standard marking, for example, when more than one mark is displayed, when a licensee uses the mark on their own packaging, or when a distributor’s name is also included on the packaging or other materials.
Trademark notice requirements are often overwhelming to brand owners, especially when foreign distribution is involved. Proper understanding and adherence to guidelines will help brand owners maximize the benefit of their trademark registrations and avoid mishaps down the road.