IP Tech Knowledgy

When offering goods and services outside of the United States, always make sure each local country allows use of the trademark registration symbol ® for goods and services. Although owners of trademarks registered in the United States are entitled to use the ® notice in the U.S., use of ® in a country without a local registration may violate that country’s laws, as this may be considered a misrepresentation in the applicable country. A U.S. registration does not establish trademark rights in a foreign country. Any packaging sent to another country, or advertising used in that country should comply with that country’s local laws.

As a best practice, before utilizing ® in connection with goods or services offered abroad, a trademark owner should consult an attorney familiar with the applicable country’s trademark laws to assess the risks and potential consequences of using ® without a local registration. A safer option could be to replace ® with ™ in all countries where the trademark is not registered locally, because even the ™ notice asserts some level of trademark rights and might still be deemed a misrepresentation. Still, check with local counsel to confirm that ™ is a safer alternative. The owner could also apply for trademark protection in important countries as part of its international expansion; once registration is obtained, ® can be used without the risk of misrepresentation and the negative consequences that may result. These consequences may include fines and civil or criminal liability in certain countries. 

While use of the ® symbol has benefits of its own in the U.S., actual registration -- not the symbol itself -- is what protects the trademark rights of a seller. 

Jennifer R. Mumm
410-576-4180 • jmumm@gfrlaw.com