Guide To Trademarks


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Guide To Trademarks

 

NOTICE: CHANGES IN THE LAW PERTAINING TO FEDERAL TRADEMARK REGISTRATION
TAKE EFFECT ON NOVEMBER 16, 1989. THE INFORMATION CONTAINED HEREIN
INCORPORATES THESE CHANGES.

BASIC FACTS ABOUT TRADEMARKS

 

A TRADEMARK may be a word, symbol, design or combination word and
design, a slogan or even a distinctive sound which identifies and
distinguishes the goods or services of one party from those of another. Used
to identify a service, it can be called a service mark. In general,
throughout this pamphlet the term trademark will refer to both trademarks and
service marks. Normally, a trademark for goods appears on the product or on
its packaging, while a service mark is usually used in advertising to
identify the owner' s services.

A trademark is different from a copyright or a patent. A copyright
gives protection for an artistic or literary work and a patent gives
protection for an invention.

Unlike a copyright or patent, trademark rights can last indefinitely if
the mark continues to perform a source-indicating function. The term of the
Federal trademark registration is 10 years, with 10 year renewal terms.
However, between the fifth and sixth year after the date of the registration,
the registrant must file an affidavit stating the mark is currently in use in
commerce. If no affidavit is filed, the registration will be cancelled.

Trademark fights arise from either (1) use of the mark, or (2) a bona
fide intention to use a mark, along with the filing of an application to
Federally register that mark on the Principal Register. A Federal trademark
registration is not required in order for a trademark to be protected, and a
trademark may be used without obtaining a registration.

Before a trademark owner may file an application for a Federal
registration, the owner must either (1) use the mark on goods which are
shipped or sold, or services which are rendered, in commerce regulated by
Congress (e.g., interstate commerce or commerce between the U.S. and a
foreign country), or (2) have a.bona fide intention to use the mark in such
commerce in relation to specific goods or services.

BENEFITS OF REGISTRATION

 

WHILE Federal registration is not necessary for trademark certain
advantages:

1 The filing date of the application is a constructive date of first
use of the mark in commerce (this gives registrant nation wide priority as of
that date, except as to certain prior users or prior applicants);

2 The right to sue in Federal court for trademark infringement;

3 Recovery of profits, damages and costs in a Federal court
infringement action and the possibility of treble damages and attorneys'
fees;

4 Constructive notice of a claim of ownership (which eliminates a good
faith defence for a party adopting the trademark subsequent to the
registrant's date of registration);

5 The right to deposit the registration with Customs in order to stop
the importation of goods bearing an infringing mark;

6 Prima facie evidence of the validity of the registration,
registrant's ownership of the mark and of registrant's exclusive right to use
the mark in commerce in connection with the goods or services specified in
the certificate;

7 The possibility of incontestability, in which case the registration
constitutes conclusive evidence of the registrant's exclusive right, with
certain limited exceptions, to use the registered mark in commerce;

8 Limited grounds for attacking a registration once it is five years
old;

9 Availability of criminal penalties and treble damages in an action
for counterfeiting a registered trademark;

10 A basis for filing trademark applications in foreign countries.

NOTICE

 

ONCE a Federal registration is issued, the registrant may give notice
of registration by using the symbol, or the phrase "Registered in U.S.
Patent and Trademark Office" or "Reg. U.S. Pat. & Tm.
Off." Although registration symbols may not be lawfully used prior to
registration, many trademark owners use a TM or SM (if the mark identifies a
service) symbol to indicate a claim of ownership, even if no Federal
trademark application is pending.

THE REGISTRATION PROCESS

 

THE Patent and Trademark Office (PTO) is responsible for the Federal
registration of trademarks. When an application is filed, it is reviewed to determine
if it meets the requirements for receiving a filing date (see page 4). If the
filing requirements are riot met, the entire mailing, including the fee, is
returned to the applicant. If the application meets the filing requirements,
it is assigned a serial number, and the applicant is sent a filing receipt.

The first part of the registration process is a determination by the
Trademark Examining Attorney as to whether the mark may be registered. An
initial determination of registrability, listing any statutory grounds for
refusal as well as any procedural informalities in the application, is issued
about three months after filing. The applicant must respond to any objections
raised within six months, or the application will be considered abandoned. If,
after reviewing the applicants response, the Examining Attorney makes a final
refusal of registration, the applicant may appeal to the Trademark Trial and
Appeal Board, an administrative tribunal within the PTO.

Once the Examining Attorney approves the mark, the mark will be
published in the Trademark Official Gazette, a weekly publication of the PTO.
Any other party then has 30 days to oppose the registration of the mark, or
request an extension of time to oppose. An opposition is similar to a proceeding
in the Federal district courts, but is held before the Trademark Trial and
Appeal Board. If no opposition is filed, the application enters the next
stage of the registration process.

If the mark published based upon its actual use in commerce, a registration
will issue approximately 12 weeks from the date the mark was published.

If, instead, the mark published based upon applicants statement of a
bona fide intention to use the mark in commerce, a notice of allowance will
issue approximately 12 weeks from the date the mark was published. The
applicant then has six months from the date of the notice of allowance to
either (1) use the mark in commerce and submit a statement of use, or (2)
request a six-month extension of time to file a statement of use (see forms
and instructions at back of booklet). The applicant may request additional
extensions of time only as noted in the instructions on the back of the form.

STATUTORY GROUNDS FOR REFUSAL

 

THE Examining Attorney will refuse registration if the mark or term
applied for:

1 Does not function as a trademark to identify the goods or services as
coming from a particular source;for example, the matter applied for is merely
ornamentation;

2 Is immoral, deceptive or scandalous;

3 May disparage or falsely suggest a connection with persons,
institutions, beliefs or national symbols, or bring them into contempt or
disrepute;

4 Consists of or simulates the flag or coat of arms or other insignia
of the United States, or a State or municipality, or any foreign nation;

5 Is the name, portrait or signature of a particular living individual,
unless he has given written consent; or is the name, signature or portrait of
a deceased President of the United States during the life of his widow, unless
she has given her consent;

6 So resembles a mark already registered in the PTO as to be likely,
when used on or in connection with the goods of the applicant, to cause
confusion, or to cause mistake, or to deceive;

7 Is merely descriptive or deceptively misdescriptive of the goods or
services;

8 Is primarily geographically descriptive or deceptively misdescriptive
of the goods or services of the applicant;

9 Is primarily merely a surname.

A mark will not be refused registration on the grounds listed in
numbers 7, 8 and 9 if the applicant can show that, through use of the mark in
commerce, the mark has become distinctive so that it now identifies to the
public the applicants goods or services.

Marks which are refused registration on the grounds listed in numbers
1, 7, 8 and 9 may be registrable on the Supplemental Register, which contains
terms or designs considered capable of distinguishing the owner's goods or
services, but that do not yet do so. A term or design cannot be considered
for registration on the Supplemental Register unless it is in use in commerce
in relation to all the goods or services identified in the application, and
an acceptable allegation of use has been submitted.

If a mark is registered on the Supplemental Register, the registrant
may bring suit for trademark infringement in the Federal courts, or may use
the registration as a basis for filing in some foreign countries. None of the
other benefits of Federal registration listed on page 1 apply. An applicant
may file an application on the Principal Register and, if appropriate, amend
the application to the Supplemental Register for no additional fee.

TRADEMARK SEARCH LIBRARY

 

A RECORD of all active registrations and pending applications is
maintained by the PTO to help determine whether a previously registered mark
exists which could prevent the registration of an applicants mark.

(See ground for refusal No. 6, above.)

The search library is located near Washington, D.C. at Crystal Plaza 2,
2nd Floor, 2011 Jefferson Davis Highway, Arlington, VA 22022, and is open to
the public free of charge Monday through Friday, 8:00 am to 5:30 pm.

The PTO cannot advise prospective applicants of the availability of a
particular mark prior to the filing of an application. The applicant may hire
a private search company or law firm to perform a search if a search is
desired before filing an application and the applicant is unable to visit the
search library.

The PTO cannot recommend any such companies, but the applicant may wish
to consult listings for "Trademark Search Services" in the
telephone directories or contact local bar associations for a list of
attorneys specialising in trademark law.

WHO MAY FILE AN APPLICATION

 

THE owners of marks may file and prosecute their own applications for
registration, or be represented by an attorney. The Patent and Trademark
Office cannot help select an attorney.

FILING REQUIREMENTS

 

AN application consists of

(1) a written application form;
(2) a drawing of the mark; (3)

the required filing fee; and, only if the application is filed based upon
prior use of the mark in commerce,

(4) three specimens showing actual use of the mark on or in connection
with the goods or services. A separate application must be filed for each
mark for which registration is requested.

Following is a description of each of these elements of a complete
application. The written application form is the first form of four forms at
the back of the booklet and is titled "Trademark/Service Mark
Application, Principal Register, with Declaration." [The back page of
the form is printed upside down so that it may be affixed to the application
file at the top and still be easily read.]

Written Application Form

 

THE application must be written in English. The enclosed form may be
used for either a trademark or service mark application. Additional forms may
be photocopied. The following explanation covers each blank, beginning at the
top.

Heading. Identify (a) the mark (e.g. "ERGO" or "ERGO and
design") and (b) the class number(s) of the goods or services for which
registration is sought. Classification is part of the PTO's administrative
processing. The International Classification of Goods and Services is used
(see inside back cover of this booklet). The class may be left blank if the
appropriate class number is not known.

Applicant. The application must be filed in the name of the owner of
the mark. Specify, if an individual, applicants name and citizenship; if a
partnership, the names and citizenship of the general partners and the
domicile of the partnership; if a corporation or association, the name under
which it is incorporated and the state or foreign nation under the laws of
which it is organised. Also indicate the applicants post office address.

Identification of Goods or Services. State briefly the specific goods
or services for which the mark is used or intended to be used and for which
registration is sought. Use clear and precise language, for example,
"women's clothing namely, blouses and skirts," or "computer
programs for use by accountants," or "retail food store
services." Note that the identification of goods or services should
describe the goods the applicant sells or the services the applicant renders,
not the medium in which the mark appears, which is often advertising.
"Advertising" in this context identifies a service rendered by
advertising agencies. For example, a restaurateur would identify his service
as "restaurant services," not "menus, signs, etc." which
is the medium through which the mark is communicated.

Basis for Application. The applicant must check at least one of four
boxes to specify the basis for filing the application. Usually an application
is based upon either (1) prior use of the mark in commerce (the first box),
or (2) a bona fide intention to use the mark in commerce {the second box),
but not both. If both the first and second boxes are checked, the Patent and
Trademark Office will not accept the application and will return it to the applicant
without processing.

The last two boxes pertain to applications filed in the United States
pursuant to international agreements, based upon applications or
registrations in foreign countries. These bases are asserted relatively
infrequently. For further information about foreign-based applications, the
applicant may call the trademark information number listed in this booklet or
contact a private attorney.

If the applicant is using the mark in commerce in relation to all the
goods or services listed in the application, check the first box and state
each of the following:

-- The date the trademark was first used anywhere in the U.S. on the
goods, or in connection with the services, specified in the application;

-- The date the trademark was first used on the specified goods, or in
connection with the specified services, sold or shipped (or rendered) in a
type of commerce which may be regulated by Congress;

-- The type of commerce in which the goods were sold or shipped or
services were rendered [for example, "interstate commerce" or
"commerce between the United States and (specify foreign
country)"]; and

-- How the mark is used on the goods, or in connection with the
services [for example, "the mark is used on labels which are affixed to
the goods," or "the mark is used in advertisements for the
services"].

If the applicant has a bona fide intention to use the mark in commerce
in relation to the goods or services specified in the application, check the
second box. This would include situations where the mark has not been used at
all or where the mark has been used on the specified goods or services only
within a single state (intrastate commerce).

Execution. The application form must be dated and signed. (See back of
form.) The declaration and signature block appear on the back of the form.
The Patent and Trademark Office will not accept an unsigned application and
will return it to the applicant without processing. By signing the form, the
applicant is sweating that all the information in the application is believed
to be true. If the applicant is an individual, the individual must execute
it; if joint applicants, all must execute; if a partnership, one general
partner must execute the application; and if a corporation or association,
one officer of the organisation must execute the application.

2. Drawing

THE drawing is a representation of the mark as actually used or
intended to be used on the goods or services. There are two types; (a) typed
drawings and (b) special form drawings. All drawings must be made upon pure
white durable non shiny paper 8 1/2" wide by 11" long. One of the
shorter sides of the sheet should be regarded as its top. There must be a
margin of at least one inch on the sides and bottom of the paper and at least
one inch between the drawing of the mark and the heading.

The drawing is different than the specimens, which are the actual tags
or labels (for goods) or advertisements (for services) which evidence use of
the mark in commerce. The drawing is a black and white, or typed, rendition
of the mark which is used in printing the mark in the Official Gazette and on
the registration certificate. A copy of the drawing is also fried in the
paper records of the Trademark Search Library to provide notice of the
pending application.

Heading. Across the top of the drawing, beginning one inch from the top
edge and not exceeding one third of the sheet, list on separate lines:

-- Applicants name;

-- Applicants post office address; -- The goods or services specified
in the application (or typical items of the goods or services if there are
many goods or services listed);

-- Only in an application based on use in commerce--the date of first
use of the mark anywhere in the U.S. and the date of first use of the mark in
commerce;

-- Only in an application based on a foreign application--the filing
date of the foreign application.

Typed drawing. If the mark is only words, or words and numerals, and
the applicant does not wish the registration to be issued for a particular
depiction of the words and/or numerals, the mark may be typed in capital
letters in the centre of the page.

Special form drawing. This form must be used if the applicant wishes
the registration for the mark to be issued in a particular style, or if the
mark contains a design element. The drawing of the mark must be done in black
ink, either with an Indian ink pen or by a process which will give
satisfactory reproduction characteristics. Every line and letter, including
words, must be black. This applies to all lines, including lines used for
shading. Half-tones and Grays are not acceptable. All lines must be clean,
sharp, and solid, and not be fine or crowded. A photo lithographic
reproduction, printer's proof or camera ready copy may be used if otherwise
suitable. Photographs are not acceptable. Photocopies are acceptable only if
they produce an unusually clear and sharp black and white rendering. The use
of white pigment to cover lines is not acceptable.

The preferred size of the drawing of the mark is 2 1/2" x 2
1/2", and in no case may it be larger than 4" x 4". The Patent
and Trademark Office will not accept an application with a special form
drawing depicted larger than 4" by 4" and will return the
application without processing. If the amount of detail in the mark precludes
clear reduction to the required 4" x 4" size, such detail should
not be shown in the drawing but should be verbally described in the body of
the application.

Where colour is a feature of a mark, the colour or colours may be
designated in the drawing by the linings shown in the following chart:

3. Specimens (Examples of Use)

TRADEMARKS may be placed on the goods; on the container for the goods;
on displays associated with the goods; on tags or labels attached to the goods;
or, if the nature of the goods makes such placement impractical, then on
documents associated with the goods or their sale. Service marks may appear
in advertisements for the services, or in brochures about the services, or on
business cards or stationary used in connection with the services.

For an application based on actual use of the mark in commerce, the
applicant must furnish three examples of use, as described in the paragraph
above, when the application is filed. The Patent and Trademark Office will
not accept an application based on use in commerce without at least one
"specimen" and will return it to the applicant without processing.

The three "specimens" may be identical or they may be
examples of three different types of uses. The three specimens should be
actual labels, tags, containers, displays, etc. for goods; and actual.
advertisements, brochures, store signs or stationary (if the nature of the
services is clear from the letterhead or body of the letter), etc. for
services. Specimens may not be larger than 8 1/2" by 11" and must
be capable of being arranged flat. Three-dimensional or bulky material is not
acceptable. Photographs or other reproductions clearly and legibly showing
the mark on the goods, or on displays associated with the goods, may be
submitted if the manner of affixing the mark to the goods, or the nature of
the goods, is such that specimens as described above cannot be submitted.

4. Filing Fee

THE fee, effective April 17, 1989, is $175 for each class of goods or
services for which the application is made. (See International Classification
of Goods and Services on inside back cover.) At least $175 must be submitted
for the application to be given a filing date. All payments should be made in
United States specie, treasury notes, national bank notes, post office money
orders, or certified checks. Personal or business checks may be submitted.
The Patent and Trademark Office will cancel credit if payment cannot be
collected. Money orders and checks should be made payable to the Commissioner
of Patents and Trademarks. Money sent by mail to the Patent and Trademark
Office will be at the risk of the sender; letters containing cash should be
registered. Remittances made from foreign countries must be payable and
immediately negotiable in the United States for the full amount of the fee
required. Application fees are non-refundable.

FURTHER REQUIREMENTS FOR INTENT-TO-USE APPLICANTS

 

AN applicant who alleges only a bona fide intention to use a mark in
commerce must make use of the mark in commerce before a registration will be
issued. After use begins, the applicant must submit, along with specimens
evidencing use (see page 8) and a fee of $100 per class of goods or services
in the application, either (1) an Amendment to Allege Use or (2) a Statement
of Use. The difference between the two filings is the timing of the filing.
Copies of each of these forms appear in the back of this booklet behind the
application form. See the instructions and information concerning the filing
of these forms on the back of each form.

Also in the back of this booklet is a form entitled "Request for
Extension of Time under 37 CFR 2.89 to File a Statement of Use, with
Declaration." This form is intended for use only when. an applicant
needs to request an extension of time to file a statement of use. See the
instructions and information concerning the use of this form on the back of
the form.

FOREIGN APPLICANTS

 

DOMESTIC REPRESENTATIVE.
Applicants not living in the United States must designate by a written
document the name and address of some person resident in the United States on
whom notices of process in-proceedings affecting the mark may be served. This
person will also receive all official communications unless the applicant is
represented by an attorney in the United States.

COMMUNICATIONS WITH THE PTO

 

THE application and all other communications should be addressed to
"The Commissioner of Patents and Trademarks, Washington, D.C.,
20231." It is preferred that the applicant indicate its telephone number
on the application form. Once a serial number is assigned to the application
the applicant should refer to this number in all telephone and written
communications concerning the application.

ADDITIONAL INFORMATION

 

The Federal registration of trademarks is governed by the Trademark Act
of 1946, 15 U.S.C. See. 1051 et seq.; the Rules, 37 C.F.R. Part 2; and the
Trademark Manual of Examining Procedure.

General Trademark or Patent Information:
(703) 557-INFO

Status Information for Particular Trademark Applications:
(703) 557-5249

General Copyright Information:
(202) 479-0700

International schedule of classes of goods and services

 

Goods

1 Chemicals products used in industry, science, photography,
agriculture. horticulture, forestry, artificial and synthetic resins;
plastics in the form of powders, liquids or pastes, for industrial use;
manure (natural and artificial); fire extinguishing compositions; tempering
substances and chemical preparations for soldering; chemical substances for
preserving foodstuffs; tanning substances; adhesive substances used in
industry.

2 Paints, varnishes. lacquers; preservatives against rust and against
deterioration of wood; colouring matters, dyestuffs; mordants; natural
resins; metals in foil and powder form for painters and decorators.

3 Bleaching preparations and other substances for laundry use;
cleaning, polishing, scouring and abrasive preparations; soaps; perfumery,
essential oils, cosmetics, hair lotions; dentifrices.

4 Industrial oils and greases (other than oils and fats and essential
oils); lubricants; dust laying and absorbing compositions; fuels (including
motor spirit) and illuminants; candles, tapers, night lights and wicks.

5 Pharmaceutical, veterinary, and sanitary substances; infants' and
invalids' foods; plasters, material for bandaging; material for stopping
teeth, dental wax, disinfectants; preparations for killing weeds and
destroying vermin.

6 Unwrought and partly wrought common metals and their alloys; anchors,
anvils, bells, rolled and cast building materials; rails and other metallic
materials for railway tracks; chains (except driving chains for vehicles);
cables and wires (non electric); locksmiths' work; metallic pipes and tubes;
safes and cash boxes; steel balls; horseshoes; nails and screws; other goods
in non precious metal not included in other classes; ores.

7 Machines and machine tools; motors (except for land vehicles);
machine couplings and belting (except for land vehicles); large size
agricultural implements; incubators.

8 Hand tools and instruments; cutlery, forks, and spoons; side arms.

9 Scientific, nautical, surveying and electrical apparatus and
instruments (including wireless), photographic, cinematographic, optical,
weighing, measuring, signalling, checking (supervision), life-saying and
teaching apparatus and instruments; coin or counter freed apparatus; talking
machines; cash registers; calculating machines; fire extinguishing apparatus.

10 Surgical, medical, dental, and veterinary instruments and apparatus
(including artificial limbs, eyes and teeth).

11 Installations for lighting, heating, steam generating, cooking,
refrigerating, drying, ventilating, water supply, and sanitary purposes.

12 Vehicles; apparatus for locomotion by land, air or water.

13 Firearms; ammunition and projectiles; explosive substances;
fireworks.

14 Precious metals and their alloys and goods in precious metals or
coated therewith (except cutlery, forks and spoons); jewelry, precious
stones, horological and other chronometric instruments.

15 Musical instruments (other than talking machines and wireless
apparatus).

16 Paper and paper articles, cardboard and cardboard articles; printed
matter, newspaper and periodicals, books; bookbinding material; photographs;
stationery, adhesive materials (stationery); artists' materials; paint
brushes; typewriters and office requisites (other than furniture);
instructional and teaching material (other than apparatus); playing cards;
printers' type and cliches (stereotype).

17 Gutta percha, Indian rubber, balata and substitutes, articles made
from these substances and not included in other classes; plastics in the form
of sheets, blocks and rods, being for in manufacture; materials for packing,
stopping or insulating; asbestos, mica and their products; hose pipes (non
metallic).

18 Leather and imitations of leather, and articles made from these
materials and not included in other classes; skins, hides; trunks and
travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

19 Building materials, natural and artificial stone, cement, lime,
mortar, plaster and gravel; pipes of earthenware or cement; road making
materials; asphalt, pitch and bitumen; portable buildings; stone monuments;
chimney pots.

20 Furniture, mirrors, picture frames; articles (not included in other
classes) of wood, cork, reeds, cane, wicker, horn, bone, ivory, whalebone,
shell, amber, mother-of-pearl, meerschaum, celluloid, substitutes for all
these materials, or of plastics.

21 Small domestic utensils and containers (not of precious metals, or
coated therewith); combs and sponges; brushes (other than paint brushes);
brush making materials; instruments and material for cleaning purposes, steel
wool; un worked or semi-worked glass (excluding glass used in building);
glassware, porcelain and earthenware, not included in other classes.

22 Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks;
padding and stuffing materials (hair, kapok, feathers, seaweed, etc.); raw
fibrous textile materials.

23 Yarns, threads.

24 Tissues (piece goods); bed and table covers; textile articles not
included in other classes.

25 Clothing, including boots, shoes and slippers. 26 Lace and
embroidery, ribands and braid; buttons, press buttons, hooks and eyes, pins
and needles; artificial flowers.

27 Carpets, rugs, mats and matting; linoleums and other materials for
covering existing floors; wall hangings (non textile).

28 Games and playthings; gymnastic and sporting articles (except
clothing); ornaments and decorations for Christmas trees.

29 Meats, fish, poultry and game; meat extracts; preserved, dried and
cooked fruits and vegetables; jellies, jams; eggs, milk and other dairy
products; edible oils and fats; preserves, pickles.

30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes;
flour, and preparations made from cereals; bread, biscuits, cakes, pastry and
confectionery, ices; honey. treacle; yeast, baking powder; salt, mustard,
pepper, vinegar, sauces, spices; ice.

31 Agricultural, horticultural and forestry products and grains not
included in other classes; living animals; fresh fruits and vegetables;
seeds; live plants and flowers; foodstuffs for animals, malt.

32 Beer, ale and porter; mineral and aerated waters and other non
alcoholic drinks; syrups and other preparations for making beverages.

33 Wines, spirits and liqueurs.

34 Tobacco, raw or manufactured; smokers' articles; matches.

Services

35 Advertising and business.

36 Insurance and financial.

37 Construction and repair.

38 Communication.

39 Transportation and storage.

40 Material treatment.

41 Education and entertainment.

42 Miscellaneous.



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