Is the Registered Trademark Symbol (®) Crucial? Absolutely!
According to the Lanham Act, failing to use the registered trademark symbol or an equivalent notice can have serious implications. Under 15 USC § 1111, in any infringement suit, a registered trademark owner must provide notice of registration using the ® symbol. Failure to do so means the owner cannot claim profits or damages unless the defendant had actual notice of the registration.
A notable case, Coach, Inc. v. Asia Pacific Trading Company, emphasized that Lanham Act Section 29’s notice requirements for a registered trademark could apply to cases pursuing monetary damages under Lanham Act Section 43(a) based on unregistered rights for the same trademark. This underscores the importance of showcasing the ® symbol for a registered trademark.
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.
Understanding Damages in Trademark Infringement Suits:
When a violation occurs, the plaintiff is entitled, under 15 USC §§1111, 1114, to recover defendant’s profits, damages sustained, and the costs of the action. The court assesses profits and damages, with the plaintiff proving the defendant’s sales and the defendant demonstrating cost elements. In cases of inadequate or excessive recovery based on profits, the court may adjust the judgment accordingly.
It’s a critical lesson not to overlook the registered trademark symbol. Using the ® symbol for all registered trademarks ensures you don’t lose the ability to collect damages in a trademark infringement lawsuit.
Connect with Verna Law, P.C.:
If you have questions about trademark law, contact Verna Law, P.C. at 914-908-6757 or via email at email@example.com.