Avoiding False-Marking Claims with Global Brands

Generally, the purpose of a trademark notice symbol is to notify the public that the words or designs they accompany should be interpreted as identifiers of the source of particular goods or services. More specifically, the ' signals that a mark is registered, and the ' (or its service mark counterpart, SM) signals a more general ( e.g. , common law) claim to a mark. In an infringement suit, a successful plaintiff may only recover lost profits if the plaintiff can show that the infringer had actual notice of the existence of a prior trademark registration, and is typically only rewarded an injunction. However, a trademark registrant who consistently posts the ' alongside the relevant mark is deemed to have provided constructive notice of registration, and is therefore relieved of the burden of having to establish actual notice. This effectively increases the damages available to registrants in an infringement suit. On the other side of the coin, false marking ' i.e. , improperly using the ' to signal that an unregistered mark is registered ' is tantamount to fraud and can open the “false marker” up to civil, and sometimes even criminal, liabilities. For example, in Japan, false marking can be penalized with up to three years' imprisonment. While often not enforced, false marking is to be avoided. Thus, properly marking trademarks is fundamental to smart trademark practice, as it not only increases the potential damages available in the event of infringement, but it also prevents liabilities for false marking.