Penalty for Using Registered Trademark Registration Symbol ® If Your Mark is Not Registered

We posted a quick guide to risks involved in improperly using a Trademark Registration Symbol (®) a few years back, and want to make sure our new readers are just as well informed.

Some businesses will improperly use the trademark registered symbol for a wide range of reasons. Most often, they’re merely mistaken, or innocently using the symbol improperly. But to do so deliberately is fraud. As per Section 906.02 of the Trademark Manual of Examining Procedure:

“Improper use of the federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud. See TMEP §906.04. However, misunderstandings about use of federal registration symbols are more frequent than occurrences of actual fraudulent intent.”

Some of the most common reasons for improper use that do not indicate fraud are:

• • Confusion between application of trademark and copyright notices. For copyrights the © should be applied before publication.
• • For trademarks many people mistakenly begin applying ® to their product while their trademark is still only an application. A trademark must be fully registered by the USPTO before ® can be used.
• • Mistaken belief that registration in foreign country applies in United States, as well.
• • Registration for only a portion of the mark
• • Registering the mark for other goods
• • The USPTO prefers not to penalize persons who unintentionally apply the registration symbol incorrectly, but the USPTO is well within its right to do so. If the USPTO were to pursue a person who incorrectly applies a registration symbol, that person would have to prove their innocence and unintentional fraud. One may be found guilty of fraud, unclean hands, or suffer denial of registration.

If the USPTO decides that fraud was committed deliberately, a trademark applicant’s request for relief may be barred under the doctrine of ‘unclean hands’ and evidence of intentional misuse may be used to deny a trademark registration.

Do not allow yourself to be penalized for unintentionally committing fraud. Always speak to an attorney when filing for a trademark registration, or when considering doing so. If not, you may place your brand, or company at serious risk. For more information on all trademark matters, please contact our office.