Problems Using the Registered Trademark Symbol with Products or Services Sold in a Foreign Country

R-in-a-circle-trademark

Your trademark is registered in the United States. But you sell goods/services under that trademark both in the US and in foreign countries. Should you use the registered trademark symbol, R enclosed in a circle, i.e. ®, next to the mark on or in connection with the goods/services sold in foreign countries?

Maybe not, unless you registered the mark in the foreign countries where it is used and those foreign countries allow for the use of R in a circle.

When a trademark is registered in the US and the mark is used in the US on or in connection with goods/services described in the registration, US law provides that the owner of the registration can and should indicate that the mark is registered. See 15 U.S.C. 1111. That indication is often provided by placing the letter R enclosed in a circle next to the mark, i.e. ®. An alternative to using the circle R, the owner can provide a text statement that the mark is “Registered in U.S. Patent and Trademark Office,” which can be abbreviated “Reg. U.S. Pat. & Tm. Off.”

But, trademark rights are generally confined to the countries or jurisdictions where the marks are used or registered. Therefore, a registration in the US generally does not provide the registration owner with trademark rights outside of the US.

If you use the R in a circle next to your mark on goods/services sold in a foreign country, could consumers there think that your mark is registered in that foreign country or jurisdiction? Possibly, yes. A 2000 report from the International Trademark Association details that many foreign countries prohibit the indication that a mark is registered when it is, in fact, not registered in that country. The report provides that such use can result in sanctions, civil liability, and even criminal penalties.

Therefore, you should be careful when using R in a circle in a foreign country to be sure your use comports with the local law in that country.

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