You have worked long
and hard and spent considerable sums of money establishing a brand. The last
thing you want to do is unintentionally lose your rights in that brand, or
incur significant penalties because you are not using your mark, or symbols
associated with your mark, correctly. Here are some key points to keep in
mind.
Placement of the mark
is important as well. For goods, the mark should be prominently displayed on
the goods themselves, on labels attached to the goods, and/or on packaging
for the goods. If the goods do not lend themselves to this type of
placement, it may be acceptable to include the mark next to the goods on
displays for the goods, in catalogs next to the goods, or in manuals for the
goods. For services, the mark should be displayed in the sale or advertising
of the services, such as on brochures or ads that offer the services.
The proper use of trademark
symbols also must be considered. Before a mark is registered, common
law symbols may be used to denote that a mark is deemed to be a trademark or
a service mark. The TM symbol is used to denote a trademark (for goods)
while an SM symbol is used to denote a service mark (for services). While
these common law symbols are not required in order to have common law rights
in a mark, it is a good idea to utilize them to prevent infringers from
claiming that their infringement was innocent and without knowledge of the
trademark status of a mark.
The ® symbol is only
available once a mark is registered in the national trademark registry of
the country in question. Use of the ® symbol or other indications that a
mark is registered when it is not can carry significant penalties. On the
other hand, once a mark is registered, the ® symbol or other acceptable
indication of registration should be used. In the U.S., the trademark laws
recognize any of the following as appropriate indicators of a federal
registration for both trademarks and service marks: “Registered in U.S.
Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the letter R
enclosed in a circle (i.e., “®”). The federal trademark laws provide
that failure to give notice of the registration by use of one of the
indicators will result in the registered owner being unable to recover
profits or damages against an infringer unless the infringer had
actual notice of the registration.
Unexpected consequences of
use of symbols abroad
can result where an indication of registration is used with
marks in countries where the mark is not registered. For example, let’s say
you have a U.S. registration, so you place your mark with the ® adjacent to
it on a label attached to the product, and sell the product abroad. Many, if
not all, countries prohibit indication that a mark is registered in that
country when it is not. If the label simply carries the ® with no indication
of the country where the registration exists, there could be problems.
While some foreign countries may not be so strict in the requirement to
give notice of registration, they typically are quite strict when it comes
to indicating that a mark is registered in that country when it is not.
Frequently, the owner of a trademark registered in the U.S. will not even
realize that it might be violating the laws of another country by selling
product there with a ® next to its mark, when its mark is registered only in
the U.S. The converse could exist also, where one has a mark
registered outside the U.S. and is selling product in the U.S. with the ®
next to its mark, but no U.S. registration.
There
are various options available to address this problem. Although
cumbersome, one option is to list on a label for the product all countries
(with the proper designation for each country) in which the mark is
registered, so that there will be no uncertainty in countries where the mark
is sold but not registered. The drawback is that the label will have to be
changed whenever a new registration is obtained. A less cumbersome method
would be to indicate the registration in the primary market country
on the label, and list all of the country registrations on the
packaging. The downside is that persons could claim lack of notice if they
receive the product outside of the package. For services, the issue is
simpler, because the marketing materials can be revised from time to time as
needed to reflect all the country registrations. When it comes to proper use
of trademark symbols where foreign markets are involved, the foregoing
options, as well as other possibilities, should be explored with an eye
towards working out a strategy that coordinates the legal requirements with
the economic and practical realities.
(November 2003)
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