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The Circle-R Symbol Must Be Earned; the Lanham Act Should Punish Misuse

One example of many: The applied-for CarbonZero and Design
mark is unregistered but nonetheless displays the Circlce-R symbol.

The Circle-R symbol indicates that a mark is federally registered. It’s irksome when parties use it without having met the rigors needed for its lawful use. It’s even more irksome that the Lanham Act doesn’t penalize owners for displaying the symbol when they haven’t earned it. Imagine the PTO’s reaction when it got the drawing of this applied-for trademark design — sporting the Circle-R — falsely signaling it already has a federal registration. The PTO’s response? A mild office action directing that “Applicant must submit a new drawing with the ‘®’ deleted because it is not part of the mark.” What else could the PTO do? Ignorance is probably responsible for most misuse, but fraud is at the heart of some of it. I only wish the Lanham Act punished knowing misuse.

Posted on April 7, 2009 by Registered CommenterMichael Atkins | Comments3 Comments

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Reader Comments (3)

There is also an advisory admonishment made in Office Actions where an applicant is prematurely using the Circle-R on a specimen submitted in an application.
April 8, 2009 | Unregistered CommenterJ
I tried to make a fuss over this in a case once, where a court was permitting the owner of a stylized mark to back into protection of the unregistrable word mark. I pointed out that they were in violation of the Act for having appended the (R) to uses of the word mark, which was not registered.

Imagine the sound of crickets...
April 28, 2009 | Unregistered CommenterRon Coleman
I've got one of those warnings in front of me now, actually (not my filing!). "The specimen shows use of the federal registration symbol (R) with the applied-for-mark. However, the USPTO records do not show that the mark is registered (duh). Applicant may not use the federal registration symbol until its mark is registered in the USPTO. ... This information is advisory only. Applicant need not respond to this issue." The specimen had other problems requiring a response to the Office Action, but it made me wonder what would happen were I to submit a substitute specimen with the (R) still attached?

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