Trademark False Marking: An Avvo April Fools Joke Done Gone Confusing

I prepare myself to be a skeptic every April 1st, but I always fall victim to at least one prank.  This morning I received an email  from Avvo, a site that lists and rates lawyers.  I get emails from them once or twice a week.  This one caught my eye.

Really?  A Plastic Surgery Rewards Card?  My first inclination was that Avvo had been hacked.  I emailed my wife to show her how ridiculous it was, and she promptly reminded me it was April Fools’ Day.  Ah, so that was the one for the year.  But wait!  My skepticism was questioned by something I noticed in the email.  The presence of one registered trademark symbol: the ® in Plastic Surgery Rewards® Card.  Surely, they wouldn’t use a ® symbol without having actually registered it, right?  (Avvo has not registered the mark)  Then I began to wonder: a plastic surgery card is too ridiculous for April Fools’.  It has nothing in common with Avvo.  The best April Fools’ jokes have at least one attenuated connection to their joker.  It seemed so completely unrelated to Avvo that I couldn’t pick out why they would choose that as their April 1 joke.  Twitter is filled with people retweeting the announcement, and if you follow the tweets back, the predate April 1.  So what gives?!

My trademark spidey sense tingling, I wondered, could the presence of a ® symbol indicate whether this is a real or fake ad?  In the patent context, false marking can bring penalties.  Are there similar laws in place in the trademark framework that make the improper use of a ® symbol so outrageous that no one would dare even attempt it on April 1?

Not really.  Trademark law carries no penalty for false marking.  I once took over a trademark application in which the applicant had applied an ® symbol to a product’s mark and submitted that as a specimen, but all the PTO did was issue a little blurb:

The specimen shows use of the federal registration symbol ® with the applied-for mark.  However, the USPTO records do not show that the mark is registered.  Applicant may not use the federal registration symbol until its mark is registered in the USPTO.  TMEP §§906, 906.03.  After registration, applicant may use this symbol in connection with the specific goods and/or services listed in the registration.  Id. This information is advisory only.  Applicant need not respond to this issue.

Technically, businesses can accidentally apply a ® symbol to a mark that hasn’t been registered.  (“technically … accidentally” seems a bit hard to pull off with a straight face)  The real harm done is to competitors, not consumers.  By applying a ® mark even where none is deserved, a mark owner doesn’t really signal anything appreciably different to the consumer.  However, the ® mark can function to scare off would-be competitors, and it can give the impression that a word, phrase, or logo that is available to the public has actually been taken.  In effect, improper labeling with an ® could unfairly block a competitor’s pursuit of that mark.

Nevertheless, the application of ® by accident is much different from the purposeful and improper use of it.  Using it with intent to deceive or mislead the public is fraud.  So, bottom line: the presence of the ® symbol in the Plastic Surgery Rewards Card isn’t really dispositive.  I’ll hold off on judgment just yet – perhaps an email will come tomorrow for Cotton Candy Rewards Points.