Overview:
Does the existence and approval of a trademark by the USPTO preclude a lawsuit alleging false and deceptive advertising? Should consumer surveys be part of a dispute over the right to use a trademark symbol?
But It’s Trademarked
Whenever advertisers make claims, they should be backed by claim substantiation research. But is the registered trademark itself a claim? The National Advertising Division of the Better Business Bureau recently considered this issue, and decided that a company could not use the trademark registration symbol, ®, when its trademark application was still pending.
Trademark Mark
Riviana Foods, Inc., brought a SWIFT challenge (meaning it was fast-tracked) to the NAD, alleging that Planting Hope Brands was misleading in its use of the registered trademark symbol ® when advertising its RIGHTRICE product. RIGHTRICE is a mix of lentils, chickpeas, peas, and rice that Planting Hope acquired in 2022, along with the registered trademark. In early 2024, however, the USPTO canceled that registration in a default judgment. Planting Hope has petitioned to set aside that judgment, and the petition is pending at the TTAB. In the meantime, however, it continued advertising RIGHTRICE with the registered trademark symbol.
Marks and Consumer Preference
Riviana Foods argued that Planting Hope should not be permitted to use the ® symbol. The NAD agreed, ruling that Planting Hope should remove the symbol from product marketing and advertising until the trademark is reinstated.
This case is unusual; although the NAD will review any type of paid advertising, including labeling, the use of a registered trademark symbol is not typically challenged. As Baker Hostetler pointed out in its blog post, the NAD typically prefers to see consumer surveys supporting a trademark challenge, as the standard in such a case is whether there is any reasonable likelihood of consumer confusion. In this case, a survey could have illuminated the question of whether the ® symbol on RIGHTRICE was misleading, or whether the presence or absence of the symbol was material to consumer purchasing decisions.
If you are facing a regulatory challenge or you are in need of consumer survey research for claim substantiation, contact MMR Strategy Group.