Planting Hope had a registration for the RIGHTRICE trademark, but that registration was canceled in January 2024 by the U.S. Patent & Trademark Office (“USPTO”) in a default judgment proceeding after Planting Hope failed to respond to a petition for cancellation. Planting Hope filed a motion to set aside the default judgment, but kept using the registered trademark symbol while that proceeding was pending.

Riviana Foods objected to Planting Hope’s continued use of the symbol and filed a challenge in an unusual venue – the National Advertising Division (“NAD”). Although NAD focuses on advertising disputes, Riviana argued that Planting Hope’s use of the registered trademark symbol conveys the misleading advertising message that the RIGHTRICE trademark is registered with the USPTO.

This is far from a typical advertising case, and it’s not clear whether Planting Hope disputed NAD’s jurisdiction over the matter, but in March 2024, NAD issued a decision in which it recommended that the company stop using the registered trademark symbol in ads unless there is a final determination reinstating the RIGHTRICE trademark on the federal register. Planting Hope agreed to comply.

In May 2024, Riviana initiated a compliance proceeding questioning whether Planting Hope had sufficiently complied. Planting Hope explained that it had made changes to digital materials, but not physical materials, and that its motion to set aside the default judgment had been fully briefed and was awaiting a decision from the Trademark Trial and Appeal Board (“TTAB”). A successful motion would moot NAD’s decision.

NAD determined that just because Planting Hope was waiting for the TTAB decision, that didn’t mean it could wait to comply with NAD’s decision. NAD asked the company to take down images on its social media pages that included the registered trademark symbol. NAD didn’t ask Planting Hope to remove existing inventory with that symbol from stores, but cautioned the company not to produce new inventory with that symbol at this time.

Although NAD has previously determined that trademarks can convey advertising claims, this is the first time NAD has explicitly determined that an advertiser’s use of a trademark symbol can itself constitute a claim. NAD isn’t going to turn into a venue for broader trademark disputes, but if you find yourself in this narrow fact pattern, NAD may present a good venue for a challenge.

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