Use of the Trademark Registration Symbol ®: What Winemakers Need to Know
As a winemaker, your brand identity is important to your success. Protecting your trademarks and growing your brand can help you stand out in a crowded marketplace and build a loyal customer base. With that in mind, it is important to comply with Section 906 of the Trademark Manual of Examining Procedure (TMEP). This blog post discusses what winemakers need to know about TMEP § 906 and how it impacts their trademark rights and obligations.
The Basics of TMEP § 906
TMEP § 906 summarizes relevant regulations that address proper use of the federal registration notice symbol, also known as the registration symbol “®,” by owners of registered trademarks. This section of the post further explains § 906, specifically, when and how the registration symbol should be used.
Key Points for Winemakers
1. Give Notice of Registration
As a winemaker with registered trademarks, you have the right to—and should—give notice of your registration by displaying the registration symbol “®” with your registered trademarks. This notice informs consumers and competitors that your marks are registered with the United States Patent and Trademark Office (USPTO) and enjoy legal protection under federal trademark law.
Alternatively, owners can use either of the following: “Registered in United States Patent and Trademark Office,” or the abbreviation “Reg. U.S. Pat. & Tm. Off.” Not surprisingly, most brand owners opt for the registration symbol because it is simple and recognizable.
2. Proper Use
It is important to use the registration symbol “®” only in connection with your registered mark(s) and the goods and services identified in your registration(s). Using the symbol with marks that are not actually registered with the USPTO—or goods or services that are not identified—is improper and may lead to legal consequences (e.g., a finding of fraud).
For example, the owner of a federal registration for DINOSAUR WINES that identifies “wine” in International Class 033, may place the registration symbol immediately after the name DINOSAUR WINES as it appears on the owner’s wine bottles. The owner may NOT use the registration symbol in connection with the name DINO WINES, DINO VINO, etc. or in connection with beers or spirits (unless the owner owns additional registrations that afford the owner those rights).
Proper use because the mark used on the bottle (i.e., DINOSAUR WINES) matches the registered mark (i.e., DINOSAUR WINES).
Improper use because the mark used on the bottle (i.e., DINO VINO) does not match the registered mark (i.e., DINOSAUR WINES).
3. Understanding Foreign Registrations
If you operate in foreign markets or export your wines internationally, it is important to understand that several foreign countries recognize the use of the registration symbol “®” to designate registration. Ensure that your use of the symbol complies with the regulations of each country where you do business. Here is a list of foreign countries that use the ® symbol to indicate that a mark is registered in their country:
Belgium
China (People’s Republic)
Costa Rica
Denmark
Ecuador
Germany
Guatemala
Hungary
Luxembourg
Netherlands
Nicaragua
Poland
Sweden
When a trademark owner files a trademark application with the USPTO and submits a specimen containing the ® symbol, the USPTO will frequently reject the specimen. However, “[w]hen a foreign applicant’s use of the symbol on the specimens is based on a registration in a foreign country, the use is appropriate.” TMEP § 906.01.
4. Avoid Improper Use
Deliberate and intentional misuse of the registration symbol with the intent to deceive or mislead the public constitutes fraud. However, misunderstandings or inadvertent use due to confusion or mistake are more common and may not necessarily indicate fraudulent intent. Section 906 identifies several common reasons for improper use of the federal registration symbol that do not indicate fraud:
Mistake as to the requirements for giving notice (confusion often occurs between notice of trademark registration, which may not be given until after registration, and notice of claim of copyright, which may be given before publication by placing the notice © on material when it is first published);
Inadvertence in not giving instructions (or adequate instructions) to the printer, 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;
Registration of a portion of the mark;
Registration of the mark for other goods;
A recently expired or cancelled registration of the subject mark;
Another mark to which the symbol relates on the same label.
5. Examining Attorney Response to Improper Use
As alluded to above, “[i]f a specimen in an application shows the federal registration symbol used with the mark that is the subject of the application, or with any portion of this mark, the examining attorney must determine from USPTO records whether or not such matter is registered.”
If the examining attorney investigates and the mark “does not appear to indicate registration in a foreign country, the examining attorney must point out to the applicant that the records of the USPTO 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 USPTO.” TMEP § 906.03.
Practical Considerations for Winemakers
As a winemaker, there are several practical considerations to keep in mind when it comes to complying with TMEP § 906:
Review Your Trademark Portfolio: Regularly review your trademark portfolio to ensure that the registration symbol is used and that it is used appropriately with each registered mark and that any pending applications are handled correctly. If a mark is not registered, consider using the “TM” symbol until the mark is registered.
Train Your Team: Educate your team members, especially those involved in marketing, packaging, and brand management, about the proper use of the registration symbol and the importance of trademark compliance.
Stay Informed: Stay updated on changes to trademark laws and regulations, both domestically and internationally, to ensure that your trademark practices remain compliant and effective.
Seek Legal Guidance: If you have questions or concerns about trademark protection and enforcement, seek guidance from an experienced trademark attorney who can provide tailored advice and assistance.
Conclusion
By understanding Section 906, and implementing best practices for trademark compliance, winemakers improve their odds of effectively safeguarding their brand identities, mitigating legal risks, and maximizing the value of their intellectual property assets in the dynamic and competitive wine industry. To discuss your trademarks with an experienced trademark attorney, please schedule a consultation here.
