An owner of a trademark or service mark used in commerce may request registration on the principal register by filing an application with United States Patent and Trademark Office. The registration provides certain benefits including prima facie proof of ownership and validity and constructive use throughout the country. While registration is great for brand management and protection, once the registration is obtained notice should be provided.
15 U.S.C. 1111 provides that a registrant may give notice that its mark is registered by displaying with the mark the words “registered U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the R enclosed within a circle ®. The statute further provides that in any suit for infringement by a registrant failing to give notice of registration, no profits or damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration. While this statute does not create a defense in an infringement action, it does limit the remedies a registrant may pursue. A registrant who fails to provide notice of registration may still obtain an injunction but will not be able to recover damages and profits, unless the registrant can prove the defendant had actual notice of the registration.
A registrant should be sure to put a notice adjacent to the mark when used in connection with the brand of goods or services subject to the registration. The notice should be put on a label, box, or website, as may be appropriate, to give this notice of registration. If an infringement action becomes necessary, the registrant will want the be able to pursue all possible remedies, and not be limited by registrant’s own failure to give notice.