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TRADEMARKS
A REFERENCE TOOL
What is a Trademark?
A trademark is a word, a name, symbol, logo, color, sound and/or smell which identifies the source or origin of a good or product in commerce.
A service mark is a word, name, symbol, logo, color, sound and/or smell which identifies the source or origin of a service in commerce
The term trademark will be used to refer to both throughout this reference guide.
There are four (4) basic reasons:
1. The registered mark or pending trademark application is an asset
2. The registered mark or pending trademark application can be licensed for additional income
3. The registered mark or pending trademark application can be used as a marketing tool to obtain media interest
4. The registered mark or pending trademark application can be used to stop competitors from using a similar name, logo or slogan
Federal Trademarks
The United States Patent and Trademark Office (USPTO) based in Alexandria, Virginia, is the only source for a federal trademark, which covers all 50 states and territories under US jurisdiction.
Federal trademarks are important to businesses which conduct commerce across state lines or outside the United States; or in other words, one engaged interstate commerce
State Trademarks
Each state in the US, such as Texas, Florida, and California, has a state trademark office which grants a state trademark within the jurisdiction.
These state trademarks are good for businesses which do not do business via the Internet and do not have interstate business. Restaurants, car washes and dry cleaners typically prefer state trademarks over federal trademarks.
What type of words can be trademarked?
Words that are not generic or merely descriptive of the products and/ or services can be trademarked
Words that do not merely describe the product or the service can be trademarked. For example, a filing would be rejected for the mark “CHAIR” if the good to be protected under the mark is a chair. However, if the filing for the mark “CHAIR” was for “a software program”, that filing would probably not be rejected for being descriptive.
Please note there is an exception to this rule if the company has sales using a “descriptive” word as a trademark for more than 5 years.
Words that will not cause “likelihood of confusion” with someone else’s registered mark can be register
If the company is in the camera business and it wants to file for the mark “KODAK QUICK CAMERAS” this will not succeed because the use of the name “KODAK” would cause confusion in the camera industry.
As another example, if the company wanted to use the word “STARMAN” for a software program, and the mark “STARWOMAN” is registered for software programs, it would be denied the registration on the basis of there being a likelihood of confusion with the STARWOMAN trademark.
Most businesses file in 2 or 3 of the 45 classes of goods or services for word marks and 1 class for a logo mark and 1 class for a color mark – for a total of 5 filings, one filing per class.
5 filings
¸ Filing #1 for the engineering/design services for others:
The engineering company would usually protect their name, or a particular service they offer.
¸ Filing #2 for the training service:
Since the engineering companies may have to provide training to their customers, they may also protect their name in that class.
¸ Filing #3 for the software provided by engineering company for customer use:
The engineering company may provide software to help the customers, so they also may file to protect the name for software.
¸ Filing #4 for their company colors in the class related to consulting or engineering/design services; and
¸ Filing #5 for their company logo in the same class related to consulting or engineering design services.
Who may file an application?
Only the owner of the trademark may file an application for its registration.
An application filed by a person who is not the owner of the mark will be deemed void.
Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.
What are the benefits of a federal trademark registration?
ÿ Evidence of ownership of the trademark.
ÿ Federal court jurisdiction
ÿ Leverage to prevent others from claiming “Trademark Infringement”
ÿ Improves Asset Value
ÿ Owner can request that customs enforces trademark
Should a Name or Mark be searched before use?
Yes. Searches may be conducted free of charge by the general public on the USPTO website
What is a Specimen and is it needed for filing?
A specimen is a real-world example of how the mark is actually used on the goods or in the offer of services.
Labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark.
Federal trademarks can be filed without specimens as “Intent to Use” applications, if the company has not actually used the mark within interstate commerce. Interstate use is the sale or transfer of products or the rendering of service over State lines or National boundaries.
However, if use of the mark has occurred in interstate commerce, that is, an interstate sale has occurred and money has changed hands, then a specimen exists and an “Actual Use” application can be filed which requires specimens.
Service Mark Specimens
For a service mark, specimens may be advertising such as magazine advertisements or brochures.
In the case of a service mark, the specimens must either show the mark and include some clear reference to the type of services rendered under the mark in some form of advertising, or show the mark as it is used in the rendering of the service.
For example, use of the mark on a store front or on the side of a delivery or service truck, is an acceptable specimen.
What is the drawing and is it needed for filing?
The "drawing" is a page which depicts the mark the applicant seeks to register.
In an application based on actual use, Section 1(a), 15 U.S.C. §1051(a), the drawing must show the mark as it is actually used, i.e., as shown by the specimens.
In the case of an application based on a bona fide intention to use, or “Intent to Use” application Section 1(b), 15 U.S.C. §1051(b), the drawing must show the mark as the applicant intends to use it. In an application based on a
What do the ™ and ® symbols mean?
™ means, "Trademark" and indicates that the owner is using the word or design as a trademark. It is commonly used prior to registration with the USPTO. (Similarly, "SM" denotes a service mark.)
The “R” in a circle symbol (®) indicates that the trademark is registered in the United States with the United States Patent and Trademark Office.
Is a Trademark Watching Service Important?
Yes, if the company owns an easily “abused” word mark.
A trademark watching service can warn the company of possible infringements of it’s trademarks and can enable the company to prevent registration of conflicting trademarks in the United States and over 200 other countries.
What does a watching service do?
The trademark watching service will search the USPTO’s "The Official Gazette" to identify any potential conflicts with the company's trademark.
The trademark watching service will provide the company's trademark counsel with a "watch notice" when a potentially conflicting trademark application is published.
A "watch notice" identifies the application and trademark sought to be registered and provides the name and address of the application's owner together with other information.
Will the application get rejected?
Yes. The federal government initially refuses most applications.
Grounds for refusal
There are many grounds for refusal
1. The proposed mark does not function as a trademark.
2. Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered.
3. The proposed mark consists of deceptive matter.
4. The proposed mark may falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols.
5. The proposed mark consists of flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation.
6. The proposed mark consists of a name, portrait or signature identifying a particular living individual, except by that individual's written consent.
7. The proposed mark consists of a name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
8. The proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services.
9. The proposed mark is primarily merely a surname.
How long does it take for a mark to be registered?
Generally, an applicant will receive a filing receipt approximately six months after filing. The filing receipt will include the serial number of the application.
The federal government then generally examines the case and writes an “office action” which is a refusal within six to seven months from filing the application.
A reply in writing is required within 3 months.
However, the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.
Trademark Affadavits of Use
For a trademark registration to remain valid, an Affidavit of Use ("Section 8 Affidavit") must be filed and fee paid, between the fifth and sixth year following registration.
Trademark Renewals
Before the end of every ten-year period after the date of registration, the registrant must also file a §9 renewal application and pay a fee.
45 Classes
CLASS 1 (Chemicals)
Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
CLASS 2 (Paints)
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
CLASS 3 (Cosmetics and cleaning preparations)
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
CLASS 4 (Lubricants and fuels)
Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks.
CLASS 5 (Pharmaceuticals)
Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
CLASS 6 (Metal goods)
Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; iron mongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.
CLASS 7 (Machinery)
Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.
CLASS 8 (Hand tools)
Hand tools and implements (hand operated); cutlery; side arms; razors.
CLASS 9 (Electrical and scientific apparatus)
Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), lifesaving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
CLASS 10 (Medical apparatus)
Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture material
CLASS 11 (Environmental control apparatus)
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
CLASS 12 (Vehicles)
Vehicles; apparatus for locomotion by land, air or water.
CLASS 13 (Firearms)
Firearms; ammunition and projectiles; explosives; fireworks.
CLASS 14 (Jewelry)
Precious metals and their alloys and goods in precious metals or coated therewith, not included in othe classes; jewelry, precious stones; horological and chronometric instruments.
CLASS 15 (Musical Instruments)
Musical instruments.
CLASS 16 (Paper goods and printed matter)
Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks.
CLASS 17 (Rubber goods)
Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.
CLASS 18 (Leather goods)
Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
CLASS 19 (Nonmetallic building materials)
Building materials (nonmetallic); nonmetallic rigid pipes for building; asphalt, pitch and bitumen; nonmetallic transportable buildings; monuments, not of metal.
CLASS 20 (Furniture and articles not otherwise classified)
Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
CLASS 21 (Housewares and glass)
Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; un-worked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
CLASS 22 (Cordage and fibers)
Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.
CLASS 23 (Yarns and threads)
Yarns and threads, for textile use.
CLASS 24 (Fabrics)
Textiles and textile goods, not included in other classes; bed and table covers.
CLASS 25 (Clothing)
Clothing, footwear, headgear.
CLASS 26 (Fancy goods)
Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
CLASS 27 (Floor coverings)
Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).
CLASS 28 (Toys and sporting goods)
Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
CLASS 29 (Meats and processed foods)
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats.
CLASS 30 (Staple foods)
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
CLASS 31 (Natural agricultural products)
Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.
CLASS 32 (Light beverages)
Beers; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
CLASS 33 (Wine and spirits)
Alcoholic beverages (except beers).
CLASS 34 (Smokers' articles)
Tobacco; smokers' articles; matches.
SERVICES
CLASS 35 (Advertising and business)
Advertising; business management; business administration; office functions.
CLASS 36 (Insurance and financial)
Insurance; financial affairs; monetary affairs; real estate affairs.
CLASS 37 (Building construction and repair)
Building construction; repair; installation services.
CLASS 38 (Telecommunications)
This class includes mainly services allowing at least one person to communicate with another by a sensory means. Such services include those which:
1. allow a person to talk to another,
2. transmit messages from one person to another, and
3. place a person in oral or visual communication with another (radio and television).
CLASS 39 (Transportation and storage)
Transport; packaging and storage of goods; travel arrangement
CLASS 40 (Treatment of materials)
Treatment of materials.
CLASS 41 (Education and entertainment)
Education; providing of training; entertainment; sporting and cultural activities.
CLASS 42 (Computer, scientific & legal)
Scientific and technological services and research and design relating thereto:
industrial analysis and research services; design and development of computer hardware and software;
legal services.
CLASS 43 (Hotels and Restaurants)
Services for providing food and drink; temporary accommodations.
CLASS 44 (Medical, beauty & agricultural)
Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
CLASS 45 (Personal)
Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.
Buskop Law Group
Needs Information to File a Trademark
1. Please circle type of Mark:
Word only / Logo (word and design) / Design only / Color / Slogan / Sound / Smell
2. Name of Mark:
__________________________________________________________
3. Applicant Name: __________________________________________________________
4. Entity information. State type of business entity:
If a corporation, please provide state of incorporation if business is incorporated;
If business is a partnership, limited partnership, or limited liability partnership, please provide the name of each partner and their citizenship.
If Applicant is an individual, include provide national citizenship:
____________________________________________________
5. Business address & contact information. Please include physical location if different from mailing address.
________________________________________________________________________________________________________
________________________________________________________________________________________________________
Telephone:_____________________ Fax:____________________ Email:_________________
Web address:___________________________________________________________________
Name(s) and title(s) of person(s) signing application.
NOTE: This person(s) must have proper authority to sign for Applicant, such as an officer of the company.
________________________________________________________________________________________________________
7. Filing as a state trademark or a federal trademark application? _________________________________________________
If filing a state trademark, provide states in which to file:
________________________________________________________________________________________________________
If filing a federal trademark, filing as an Actual Use (“AU”) Trademark Application or an Intent
to Use (“ITU”) Trademark Application?
______________________________________________
If filing a state trademark or a federal Actual Use Trademark Application, please provide a “specimen” to be filed with the application. The specimens must be actual samples of how the mark is being used in commerce.
8. Is this mark:
(a) a proper name 0 Yes 0 No
(b) a geographical location 0 Yes 0 No
(c) a foreign word or symbol 0 Yes 0 No
9. Has the mark been used more than five years? 0 Yes 0 No
10. Date of first use of mark anywhere:
11. Date of first use of mark within interstate commerce (across a state line or internationally for which money was obtained):
12. Scope of Trademark. Describe goods and/or services:
____________________________________________________________________________________________________________________
PROCESS STEPS FOR A TYPICAL TRADEMARK APPLICATION
Step 1: Prepare draft of Trademark/ Service Mark application to file at United States Patent and Trademark Office (USPTO)
Step 2: About 2 months later receive filing receipt from US Patent and Trademark Office, review for foreign filing license, docket case and forward filing receipt to Client
Step 3: About 9 months from Step 2, receive refusal, termed “Office Action” from USPTO, docket and forward to client, with quote to draft the Response to USPTO
Step 4: Draft Response and file within 6 months of mailing date of the Office Action from the USPTO to avoid abandonment of case
Step 5: About 6 months from Step 4, receive Notice of Publication in Official Gazette, Review, Docket and send to client
Step 6: About 6 months from Step 5, receive Notice of Allowance, review, docket for Intent to Use, draft Statement of Use Document for client signature and forward to client
Step 7: About 4 months from Step 6, Receive printed Trademark Registration, Review Docket and forward to Client
Step 8: File a Section 8 and Section 15 Incontestability Affidavit between the 5th and 6th year of the Trademark Issue date
Step 9: File a Section 8 and 9 Renewal Affidavit every 10 years of the Trademark Issue Date
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