Fraudulent Use Of The Registered Trademark Symbol

Fraud vs. Improper Use

Registered trademark symbol fraudImproper use of a registered trademark symbol can be fraud when done deliberately. The TMEP section 906.02 teaches that it is illegal to intentionally deceive or mislead the public about trademarks. Common trademark frauds include improper use of the registration symbol and also false marking of products with a trademark on knock-off products. Often, these fraudulent activities will be combined to seriously deceive the public into purchasing goods from illegitimate vendors.

Common Mistakes in Using the Registration Symbol

Trademark law can be confusing to regular business people who are not experts in legal matters. As a result, misunderstandings about use of the federal registered trademark symbol are more frequent than occurrences of actual fraudulent intent. According to the USPTO common reasons for improper use of the federal registration symbol that do not indicate fraud are:

  • Mistake as to the requirements for giving notice (confusion often occurs between notice of trademark registration, which may not be given until after registration, and notice of claim of copyright, which must be given before publication by placing the notice © on material when it is first published);
  • Inadvertence in not giving instructions (or adequate instructions) to the printer, or misunderstanding or voluntary action by the printer;
  • The mistaken belief that registration in a state or foreign country gives a right to use the registration symbol (see Brown Shoe Co., Inc. v. Robbins, 90 USPQ2d 1752 (TTAB 2009); Du-Dad Lure Co. v. Creme Lure Co., 143 USPQ 358 (TTAB 1964));
  • Registration of a portion of the mark (see Coca-Cola Co. v. Victor Syrup Corp., 218 F.2d 596, 104 USPQ 275 (C.C.P.A. 1954));
  • Registration of the mark for other goods (see Duffy-Mott Co., Inc. v. Cumberland Packing Co., 424 F.2d 1095, 165 USPQ 422 (C.C.P.A. 1970), aff’g 154 USPQ 498 (TTAB 1967); Meditron Co. v. Meditronic, Inc., 137 USPQ 157 (TTAB 1963));
  • A recently expired or cancelled registration of the subject mark (see Rieser Co., Inc. v. Munsingwear, Inc., 128 USPQ 452 (TTAB 1961));
  • Another mark to which the symbol relates on the same label (see S.C. Johnson & Son, Inc. v. Gold Seal Co., 90 USPQ 373 (Comm’r Pats. 1951)).

See TMEP 906.02 regarding improper use of the registered trademark symbol

USPTO Notice of Improper Use of the Registered Trademark Symbol

You will be notified if you file a new trademark application specimen of use, and your specimen include improper use of the registered trademark symbol. If  the Trademark Office’s examining attorney sees use of the symbol in your specimens, he or she will research the USPTO records and determine whether or not such mark is registered by the owner in the application.

If the trademark in the application is not registered in the U.S. and does not appear registered in an appropriate foreign country (see TMEP §906.01), the examining attorney will point out to the applicant that the records of the USPTO do not show that the mark with which the symbol is used on the specimens is registered. Notice is also provided to the applicant that the registration symbol may not be used until a mark is registered in the USPTO.

If you receive this notice, you should take steps to remove the offending registered trademark symbol from your product or service so that your improper use does not become deliberate and intentional.

When Improper Use of ® Becomes Fraud

  1. Deliberate
  2. Intends to deceive or mislead the public or USPTO

If you use the registration symbol ® in these two ways, then you are committing fraud as discussed in the TMEP section 906.04See Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Wells Fargo & Co. v. Lundeen & Associates, 20 USPQ2d 1156 (TTAB 1991).

While the Trademark Office attorney will not issue a refusal of registration for your trademark application based on fraud. The attorney will follow the procedures outlined in TMEP §720 if it appears that fraud on the USPTO has been committed. It is best to avoid this procedure altogether and learn how to properly use the registered trademark symbol.

The Trademark Manual of Examining Procedure is an excellent reference for many trademark questions that you may have, as well as Trademark Application Headquarters.

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