A Trademark Attorney’s Mission to find Discipline

As a professional, I wear three different hats: Trademark Attorney, Sustainability Steward and Publisher. I often find myself wondering, will I ever have enough . . .

Merriam Webster defines discipline as:

No wonder so many people (myself included) have such a hard time with it . . . discipline feels like punishment cause it is. Just look it up and you’ll see that the top definition for discipline is punishment! That makes me feel better at least.

There are 15 PTO records comprised solely of the word DISCIPLINE. Ironically, there are only 2 LIVE PTO records comprised solely of the word DISCIPLINE. The other 13 applicants and registrants lacked the discipline to either see their applications through or to renew their registrations. Of the 2 LIVE PTO records, one is for a registered mark for DISCIPLINE for an agricultural chemical, namely pesticide and the other is for a pending application for DISCIPLINE for “providing a personal analysis of an individual’s inherent strengths over an interactive website on a global computer network.” Presuming that the Discipline tattoo does not relate to pesticide (just a guess!) then perhaps it relates to one of the previously registered DISCIPLINE marks. And the choices are:

Goods	Registered	Cancelled or Expired
Hair grooming aid	10/08/1963	01/08/1984
Skin care products	02/21/1984	01/16/1997
Electronic physical therapy apparatus	04/19/1988	10/24/1994
Apparel	12/11/1990	06/16/1997
Musical performances by a rock group	03/10/1992	09/14/1998
Martial arts footwear	06/19/2001	01/20/2012

If you guessed the rock group, I’d say you’re right:

Under Section 906 of the Trademark Manual of Examining Procedure (TMEP):

The owner of a mark registered in the United States Patent and Trademark USPTO may give notice that the mark is registered by displaying with the mark . . . the letter R enclosed within a circle: ®.

The registration symbol should be used only on or in connection with the goods or services that are listed in the registration.

The federal registration symbol may not be used with marks that are not actually registered in the USPTO. Even if an application is pending, the registration symbol may not be used until the mark is registered.

The DISCIPLINE mark is no longer registered and even when it was that registration was for performances by a rock band, not for humans, which are the, um, goods to which the mark is affixed. Thus, this appears to be a classic case of trademark misuse. The question is to what effect (I surmise none) and more importantly, who’s gonna tell him? Not it!

Technically, the trademark registration symbol should be used only in connection with currently registered goods/services. Although misuse of the trademark registration symbol constitutes a trademark misuse, very rarely does it result in negative consequences.