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Small
Business Home >> Useful
Standard Legal Documents >>
Guide To Trademarks
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
nationwide 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 defense 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 applicant's 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 applicant's 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 applicant's 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 applicant's 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 specializing 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, applicant's
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 organized. Also indicate the applicant's 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 organization 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 nonshiny
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:
-- Applicant's name;
-- Applicant's 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 center 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 india
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 gray are not acceptable. All lines
must be clean, sharp, and solid, and not be fine or crowded.
A photolithographic 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 color is a feature of a mark, the color or colors 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; manures (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 (nonelectric);
locksmiths' work; metallic pipes and tubes; safes and cash
boxes; steel balls; horseshoes; nails and screws; other goods
in nonprecious 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
counterfreed 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, india 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 (nonmetallic).
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; roadmaking 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); brushmaking materials; instruments and
material for cleaning purposes, steel wool; unworked 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 (nontextile).
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
nonalcoholic 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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