What is improper use of the trademark registration symbol in the United States?

The circle R symbol – ® – indicates that a trademark has been registered as a trademark with the United States Patent and Trademark Office. If a trademark has not been registered with the United States Patent and Trademark Office the appropriate symbol to use is TM. The TM symbol alerts the public that the trademark is claimed as the property of the user of the mark.

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 circle C notice – © – on material when it is first published.

Use of the circle R symbol with a trademark before the trademark is registered with the United States Patent and Trademark Office is considered improper. Improper use of the 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. Common reasons for improper use of the federal registration symbol that do not indicate fraud are:

Mistake as to the requirements for giving notice, such as confusion between the requirements for trademark notice and copyright notice;
Inadvertence in not giving instructions (or adequate instructions) to the printer of the packaging or advertising material for the goods, 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)).

If an example of the trademark’s use in commerce is submitted with a trademark application shows the federal registration symbol used with the mark, or with any portion of this mark, the examining attorney must determine from United States Patent and Trademark Office records whether or not such matter is registered. If the mark is not registered in the United States, and if the symbol does not appear to indicate registration in a foreign country, the examining attorney at the United States Patent and Trademark Office must point out to the applicant that the records of the United States Patent and Trademark Office do not show that the mark with which the symbol is used on the specimens is registered, and that the registration symbol may not be used until a mark is registered in the United States Patent and Trademark Office. It is likely the applicant would have to resubmit an example of the trademark’s use in commerce without the circle R symbol to complete the application process.

Improper use of the circle R symbol – ® – that is deliberate and intends to deceive or mislead the public or the United States Patent and Trademark Office is considered fraud.

If you are using a trademark on your goods or services it is best to consult with an attorney that is familiar with trademark law to help you navigate the complicate rules associated with the use of the circle R symbol.