When it comes to use of the "Circle R" (®) symbol with trademarks, the National Advertising Division (NAD) has never weighed in—until now.
The NAD is an independent division of the Better Business Bureau that reviews advertising in the U.S. for truth and accuracy. The NAD's process is aimed at industry self-regulation, but it may refer its decisions to the Federal Trade Commission (FTC) if advertisers refuse to comply.
Earlier this year, the NAD determined that an entity's improper use of the ® symbol, which is reserved for trademarks registered with the U.S. Patent and Trademark Office (USPTO), was "misleading" to consumers.
The case centered around health-food company Planting Hope Brands and its trademark registration for a rice alternative product sold under the mark "RIGHTRICE." The registration for RIGHTRICE was cancelled by the Trademark Trial and Appeal Board (TTAB) via default judgment in October 2023 after a trade association challenged the use of the word "rice" in the mark as misdescriptive of the company's actual goods.
While Planting Hope Brands was in the process of appealing the cancellation, a second player in the rice industry, Riviana Foods, also challenged Planting Hope Brands' use of the mark—this time before the NAD. Riviana Foods contended that Planting Hope Brands' continued use of the ® symbol for RIGHTRICE after registration for the mark had been cancelled was misleading.
The NAD was an unexpected venue for this challenge because the organization had never previously concerned itself with the use of the ® symbol. However, the NAD considered the issue and recommended that Planting Hope Brands discontinue its use of the ® symbol until the TTAB made a final determination in the appeal of the cancellation for the RIGHTRICE mark. Planting Hope Brands agreed to comply.
While intentionally using the ® symbol improperly always carries the risk of being deemed fraud by the USPTO, this NAD challenge brings new avenues to challenge improper trademark use to light.
Whether the NAD will continue to concern itself with the use of trademark symbols remains to be seen. However, this case highlights the importance for brands to use accurate trademark symbols, and it serves as a reminder that just because use of the ® symbol may have been appropriate at one point doesn't mean that is true forever.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.