Intangible Risky Business
July 28, 2017
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Business owners, whether starting a new business or a new brand, tend to have similar trademark-related questions: Do I need a trademark registration? What rights will a registration provide? What are the associated costs and steps?
These preliminary questions are important and start a business down the path toward securing its trademark rights. However, after a registration is secured, there are other relevant issues to consider. In addition to understanding enforcement rights, the importance of proper usage, and what maintenance filings will be due, the educated trademark owner should understand the proper use of notice symbols.
The laws governing use of notice symbols (or "marking") and the consequences for improper use vary by jurisdiction. Consequences for improper usage range from claims of false advertising to fines and other criminal penalties. To reap the benefits of proper marking and avoid penalties for inadvertent misuse, brand owners should consider the following:
The Difference Between the "TM" and "SM" Symbols and the "®" Symbol
In the United States, the general rule is that the "TM" (Trademark Symbol used in relation to goods) and "SM" (Service Mark Symbol used in relation to services) notice symbols may be used with a mark at any time—before or after registration. Using these symbols puts the public on notice that the party using the symbol is claiming trademark rights in the mark for specific goods and/or services and deters third parties from adopting the same or similar marks for the same or similar goods and/or services.
Once a United States federal registration issues, the ® notice symbol may be used with the mark when appearing in connection with the goods and/or services covered by the registration. While use of the ® symbol is not required, it is important and provides significant benefits. For example, if a registrant files a trademark infringement suit against an infringing party, consistent use of the ® symbol by the trademark registration owner can be used as evidence to demonstrate that the infringer had knowledge of the trademark owner's rights, thus potentially permitting the recovery of lost profits and monetary damages.
Upon the issuance of a federal trademark registration, when considering whether to use the ® symbol, 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 to include the symbol? The answer is generally "yes," however the updating of materials can be done progressively as materials are depleted and re-ordered.
Potential Risks of Misusing the ® Symbol
What happens to a 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 and/or services can give rise to a claim of false advertising. However, the greater risk is that an infringer will raise the misuse of the symbol as a basis for an equitable defense in response to an infringement claim.
Further, if it can be shown that the symbol misuse was intended to deceive consumers or competitors, the United States Patent and Trademark Office can rely upon the misuse for rejecting the application. Brand owners should familiarize themselves with United States marking guidelines to avoid these problems.
Foreign Marking Rules and Guidelines
Foreign laws governing use of trademark notice symbols vary by country, regarding 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 United States registration is granted, then the product packaging may legally display the ® mark—if the distribution is only in the United States. If the product is sold in a foreign jurisdiction, the brand owner must conform to the marking and symbol requirements of local trademark law.
Ideally, marking should be in the local language and easily recognized by the consuming public in the foreign jurisdiction. 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.
Conclusion
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 later.
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This article is not intended to give, and should not be relied upon for, legal advice in any particular circumstance or fact situation. No action should be taken in reliance upon the information contained in this article without obtaining the advice of an attorney.
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