Even how you mark your trademarks on product packaging can get you into trouble with foreign regulators if you are not careful. Trademark law varies from nation to nation, and staying on the right side of the rules takes some research. Handling an increasing number of sales is an excellent problem to have, but it could pose some interesting issues for firms that are trying to manage their trademark rights, especially when those sales are based in other countries. You might have some stiff competition, but you also have a brand that consumers will associate with your product or service. Congratulations! That is an excellent step towards making sure that your company can gain a strong position in your industry. This ON MY MIND™ Blog post © 2014 by Cowan, Liebowitz & Latman, P.C., New York, NY.Your business has successfully registered trademarks in your home country. Some internationally distributed materials use a footnote legend such as "Trademark XYZ ® in the USA and in other countries."įor further information about trademarks, please contact William M.
Making your trademark rights known by use of a registration notice or some other means also may be necessary to get remedies against an infringer or counterfeiter in some countries such as Mexico. On the other hand, it may be necessary to use the appropriate local registration notice (or some other ownership indication in the local language) when your mark is used by a licensee or distributor whose name appears on the product or labeling, or when your mark appears with marks owned by others. In fact, falsely indicating that a trademark is registered can be a criminal offence, with possible fines and/or imprisonment, in countries such as Brunei, India, Japan, Korea and the United Kingdom.
When you are preparing labeling for products sold any other country, or when your mark will appear on a website from which purchases can be made by customers in any other country, it is desirable to review the local marking requirements.įalse or misleading use of the ® symbol can result in unfair competition claims in some countries such as Germany. The symbol ® has been officially recognized as a proper trademark registration notice by many other countries, but not all of them. The formal or informal notice does not have to appear everywhere it is sufficient to use it with the first or most prominent mention of the mark in each item on which it appears. However, If the mark was registered in block letters, the registration is considered to cover the mark regardless of its form of display.īoth the Patent and Trademark Office and the courts regularly excuse "honest mistakes."įor unregistered marks, including while you have a pending trademark application that has not yet become a registration, you may also obtain the practical advantages offered by a registration notice by using informal trademark notices, such as "TM" (meaning trademark) or "SM" (meaning service mark), or you can use an asterisk with a footnote such as "Trademark of XYZ Company." Third, in connection with goods for which the mark has not been registered.įourth, in a form of display different from the registered form of display. Second, in a location that could apply to unregistered as well as registered marks. There are four principal types of improper use:įirst, with a word or device that has not been registered as a trademark in the Patent and Trademark Office. Patent and Trademark Office, and may even lose the right to get an injunction against an infringer. On the other hand, if you intentionally use a registration notice improperly, you may lose the right to register the mark in the U.S. It may inhibit a widely misused mark from becoming generic. It shows that the term is being used as a trademark, not merely as a descriptive or generic term. There are some practical advantages to the use of a registration notice. But if it is used, the registrant can get an award of damages or profits for past infringement without having to prove that the infringer had actual notice of the registration. Patent and Trademark Office," "Registered in U.S. Alternative forms of registration notice, which may appear as a footnote with an asterisk placed next to the registered mark, are "Registered in the U.S. The proper form of registration notice is the letter "R" in a circle ® placed in immediate conjunction with the registered mark.
In the United States, it is proper to use the registration symbol ® only to give notice that a trademark has been federally registered in the United States Patent and Trademark Office.