Is the Registered Trademark Logo ® Important?
Yes, it is!
Under the Lanham Act, if the owner of a registered trademark does NOT use the r-in-a-circle symbol or give equivalent notice, then that owner cannot receive profits or damages in an infringement lawsuit.
15 USC § 1111 states, in part, “… and in any suit for infringement under this chapter by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration.”
The U.S. District Court for the Central District of California held in Coach, Inc. v. Asia Pacific Trading Company, No. 09-35, 2009 WL 3808550 (C.D. Cal. Nov. 12, 2009), that the statutory notice requirements of Lanham Act Section 29 (15 U.S.C. § 1111) for a registered trademark may also apply in cases where monetary damages are sought under Lanham Act Section 43(a) (15 U.S.C. § 1125(a)) based on the unregistered rights for the same registered trademark.
This means that a plaintiff must show that r-in-a-circle ® for a registered trademark.
What are the usual damages of a trademark infringement suit?
When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 43(a), (c), or (d) [15 USC §1125(a), (c), or (d)], or a willful violation under section 43 (c) [15 USC §1125(c)], shall have been established in any civil action arising under this Act, the plaintiff shall be entitled, subject to the provisions of sections 29 and 32 [15 USC §§1111, 1114], and subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court mayenter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court in exceptional cases may award reasonable attorney fees to the prevailing party.
The lesson is not to lose the ability to collect damages in a trademark infringement lawsuit. Use the r-in-a-circle logo ® for all registered trademarks.
If you have any questions about trademark law, please call Verna Law, P.C. at 914-908-6757 or send an e-mail to firstname.lastname@example.org.