When a trademark registration lapses or is canceled, continuing to display the ® symbol in product marketing can become the subject of a false advertising challenge. For advertisers, this raises questions: Does trademark registration status constitute an advertising claim, and should consumer survey research play a role in disputes over the right to use a trademark symbol?
Does a Registered Trademark Preclude a False Advertising Challenge?
Advertisers should be well acquainted with the principle that all advertising claims must be supported by adequate substantiation. What is less commonly examined is whether the registered trademark symbol itself functions as a claim, and whether its display, when registration is not current, can expose a brand to regulatory challenges.
BBB National Programs’ National Advertising Division (NAD) recently addressed this issue, ruling that a company could not continue using the ® symbol after its trademark registration was canceled and a petition to reinstate it remained pending.
Riviana Foods v. Planting Hope: The NAD Challenge
Riviana Foods, Inc. brought a SWIFT challenge before the NAD, alleging that Planting Hope Brands misled consumers through the use of the registered trademark symbol ® in 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 for the product name.
The USPTO had canceled the trademark registration in a default judgment. Planting Hope petitioned to set aside the judgment, and that petition remained pending before the TTAB. In the interim, Planting Hope continued advertising RIGHTRICE with the ® symbol in place. The NAD agreed with Riviana Foods, ruling that Planting Hope should remove the registered trademark symbol from all product marketing and advertising until the trademark registration is reinstated.
Why This Case Is Significant
The NAD reviews paid advertising claims, including product labeling. Challenges to the use of a registered trademark symbol are not common. The NAD relies on governing standards in matters where there is a reasonable likelihood of consumer confusion. In this case, a properly designed consumer survey may have addressed material questions, such as whether the display of the ® symbol on RIGHTRICE was misleading to consumers, and whether the presence or absence of that symbol was material to consumer purchasing decisions. Litigation surveys can provide answers to these inquiries.
The Role of Consumer Survey Research in Trademark and NAD Proceedings
Trademark disputes before the NAD, US Patent and Trademark Office, US Trademark Trial and Appeal Board, or in federal court frequently rely on empirical evidence of consumer perception. Survey research provides a way to measure the likelihood of confusion, secondary meaning, genericness, and the materiality of a challenged claim or symbol to purchasing decisions.
If you are facing a regulatory challenge, or for help evaluating whether a trademark-related claim warrants consumer research, IMS Legal Strategies provides the survey design expertise and testifying experience needed to produce reliable, court- and NAD-accepted research.
Contact our team to discuss consumer survey research for trademark disputes, NAD proceedings, or advertising claim substantiation.
