Unclean Hands - Misuse of the Circle R Symbol



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  • Misuse of the registration symbol ("®") may not constitute unclean hands where misuse use was due to a mistaken understanding of its rights, rather than to any intent to deceive the public or the trade.
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007).
      • On this record, we find that applicant has failed to prove her unclean hands defense, i.e., that opposer's misuse of the federal registration symbol "®" constitutes unclean hands which bars opposer from the relief it seeks. We regard opposer's explanation regarding opposer's misuse of the registration symbol to be plausible and indeed credible. Opposer's ownership of a registration for the mark BARBARA'S (albeit in special form) could have led opposer to mistakenly assume, as Ms. Hood declares, that opposer was entitled to use the registration symbol next to the word BARBARA'S wherever it appears. Cf. Dow Corning Corp. v. The Doric Corp., supra (where opposer's registered mark was SILASTIC 732, opposer's use of registration symbol after the word SILASTIC instead of after the numeral 732 was technically improper, but not fraudulent "given opposer's belief that its significant and long standing trademark is the designation ‘SILASTIC' and that the numeral ‘732' is akin to a grade or product designation adding little or no additional significance to the mark as a whole"); and The Reiser Company, Inc. v. Munsingwear, Inc., supra (opposer's use of registration symbol next to VENIDA mark not fraudulent, where record shows that opposer at one time owned a (now-expired) registration of the mark for other goods, and where opposer's testimony clearly shows that opposer's misuse of registration symbol with the mark "was due to a misunderstanding on its part as to the status of said registration, and of its rights thereunder, rather than to any intent to deceive the public or the trade").
  • Taking remedial actions, in conjunction with a plausible explanation of the circumstances surrounding technical misuse of the registration symbol ("®"), militates against a finding of fraudulent intent.
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007).
      • Ms. Hood's statement that she was unaware of the Trademark Examining Attorney's requirement for a substitute drawing is plausible, and it explains why opposer continued to use the symbol after the submission of a substitute drawing and after the Trademark Examining Attorney's warning against unauthorized use of the symbol. Ms. Hood's declaration also establishes that opposer, now that it is aware of the issue, is taking affirmative steps to eliminate opposer's misuse of the symbol, including "correcting the next printing of each set of applicable product packaging; correcting the website; and correcting future advertising where the mark appears." Opposer's taking of these kinds of remedial actions, when considered in conjunction with opposer's plausible explanation of the circumstances surrounding its technical misuse of the registration symbol, militates against a finding of fraudulent intent on opposer's part. See Independent Grocers' Alliance Distributing Co. v. Zayre Corporation, 149 USPQ 229 (TTAB 1966).
  • Case Finding: The evidence of record simply fails to establish that opposer's misuse of the registration symbol was undertaken with fraudulent intent or that it constitutes unclean hands.
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007).
      • We find that the evidence of record simply fails to establish that opposer's misuse of the registration symbol was undertaken with fraudulent intent or that it constitutes unclean hands. Therefore, we find that applicant has failed to prove this affirmative defense.
Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007) Grand Total
Dow Corning Corp. v. Doric Corp., 192 USPQ 106 (TTAB 1976) 1
Independent Grocers' Alliance Distributing Co. v. Zayre Corporation, 149 USPQ 229 (TTAB 1966) 1
The Reiser Company Inc. v. Munsingwear Inc., 128 USPQ 452 (TTAB 1961) 1
Grand Total 3 3
No Statutes Listed.

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