Does the registered trademark symbol ® need to be large enough to be legible to afford protection?
Even though our management wanted to trademark our logo, they do not want the ® large enough to be legible next to the logo on the business cards or letter head of the stationary.
If you go through the trouble of obtaining a federal registered trademark, it seems sort of silly not to use it. 15 USC §1111 provides as follows:
[…] A registrant of a mark registered in the Patent Office, may give notice that his mark is registered by displaying with the mark the words “Registered in U. S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the letter R enclosed within a circle, thus (R); and in any suit for infringement under this Act by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this Act unless the defendant had actual notice of the registration.
So, by not properly displaying the registered trademark symbol ®, you are potentially failing to give notice and giving up any chance at recovering profits or damages in a later trademark enforcement action. On the other hand, profits and damages are reasonably rare in trademark litigation. Finally, I would imagine that of the mark is not legible, than, it cannot provide notice. So, I can’t imagine how that would be effective.
Typically, there is usually some good way to provide for actual notice that also provides for the stylistic or design requirements. I recommend consulting with a trademark attorney for additional ideas on providing actual notice of the trademark in the various media. For some examples, you can read this article on How to use the TM and ® symbol.
Good luck with Management.