The Consequences of Using the Trademark Registration Symbol ® If Your Mark is Not Registered

We frequently come upon a company using the trademark registration symbol ® in connection with a trademark that is not yet registered with the U.S. Patent and Trademark Office (“PTO”).  Often, the company has filed a trademark application, believing that the mere filing of the application entitles it to use the registration symbol.  However, the registration symbol can only be used once the mark has actually been registered, as provided by 15 U.S.C. § 1111:

[A] registrant of a mark registered in the Patent Office, may give notice that his mark is registered by displaying with the mark the words “Registered in U. S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the letter R enclosed within a circle, thus (R); and in any suit for infringement under this Act by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this Act unless the defendant had actual notice of the registration.

OK — but what if you have been using the registration symbol in connection with a trademark that is not registered?  Consider the following:

Improper use of a federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud. However, misunderstandings about use of federal registration symbols are more frequent than occurrences of actual fraudulent intent.

  • If a plaintiff has intentionally and falsely used the registration symbol, the plaintiff’s request for relief might be barred under the doctrine of unclean hands.
  • The intentional misuse of the registration may be used to deny an applicant’s right to registration.

To be sure, courts and the PTO are reluctant to penalize a party for an innocent and unintentional use of the registration symbol.  But there is no reason to put yourself in the position of having to prove your innocence and good faith to avoid an otherwise harsh finding of fraud, unclean hands, or denial of registration.

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