Guide to Trademarks

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Guide To Trademarks

NOTICE: CHANGES IN THE LAW PERTAINING TO FEDERAL TRADEMARK
REGISTRATION TOOK 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 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.