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WHAT IS A TRADEMARK?
Trademarks are used to identify goods, that is, for physical
commodities, which may be either natural or manufactured or
produced, and which are sold or otherwise transported or
distributed. The definition in the statute for a trademark
is: "The term 'trademark' includes any word, name, symbol,
or device or any combination thereof adopted and used by a
manufacturer or merchant to identify and distinguish his
goods, including a unique product, from those manufactured
or sold by others and to indicate the source of the goods,
even if that source is unknown."
WHAT IS A SERVICE MARK?
Service marks are used to identify services, that is,
intangible activities, which are performed by one person for
a person or persons other than himself, either for pay or
otherwise. The definition in the statute for a service mark
is: "The term 'service mark' means a mark used in the sale
or advertising of services to identify and distinguish the
services of one person, including a unique service, from the
services of others and to indicate the source of the
services, even if that source is unknown."
WHAT IS A TRADE NAME?
The name of a business or company is a trade name. The
definition in the Trademark Act of 1946 is: "The terms
'trade name' and 'commercial name' include individual names
and surnames, firm names and trade names used by
manufacturers, industrialists, merchants, agriculturists,
and others to identify their businesses, vocations or
occupations; the names or titles lawfully adopted and used
by persons, firms, associations, corporations, companies,
unions, and any manufacturing, industrial, commercial,
agricultural, or other organizations engaged in trade or
commerce and capable of suing and being sued in a court of
law."
Trade names may be distinguished from trademarks and service
marks because there is no provision in the Trademark Act for
the registration of a trade name which is used solely as a
trade name. However, wording which constitutes a trade name
may be used also in such a manner that it functions as a
trademark or service mark. For this reason it is necessary
to exercise care in examination in order to determine
registrability of matter which serves the dual function of
being a trade name and a trademark or service mark.
WHO CAN APPLY TO REGISTER A TRADEMARK OR SERVICE MARK?
Only the owner of a mark may apply to register the mark.
Normally the owner of a mark is the person or company who
applies the mark to goods produced by him or uses the mark
in connection with services performed by him.
Applicants may be natural persons, or juristic persons.
Juristic persons include firms, corporations, unions,
associations, or other organizations capable of suing and
being sued. Partnerships and joint ventures are regarded as
coming under the designations "firms." Nations, states,
municipalities, and other related types of bodies operating
with governmental authorization, may apply to register marks
which they own.
TYPES OF APPLICATIONS
A single or single class application is limited to one of
the classes in the classification schedules. The application
may recite more than one item, provided the items recited
are all classified in one class.
A combined or multiple class application includes more than
one class. It is an application to register the same mark
for items classified in more than one class. A filing fee,
dates of use and specimens must be furnished for each class
in the combined application.
IDENTIFYING GOODS AND SERVICES
The trademark statute requires the written application to
"specify" the goods or services in connection with which the
mark is used. The identification of the goods or services
should be clear and concise, and as brief as possible, using
common names current in the marketplace. For those products
or services which may not have common names, language as
succinct as possible should be devised. Technical language
and lengthy descriptions of characteristics or uses are not
appropriate.
INDENTIFYING DATES OF USE
A specification of date of use is required only when
registration is sought on the basis of use in commerce. An
application which is required to specify use dates shall
specify the date of applicant's first use of the mark or of
the first use which inures to applicant's benefit. This
should be the date on which the goods were first sold or
transported or the service first rendered.
An application shall specify the date on which applicant
first used the mark in commerce which may lawfully be
regulated by Congress. This is the date on which the goods
were first sold or transported or the service rendered in a
type of commerce which may lawfully be regulated by
Congress.
If the first use which applicant made was in commerce which
may be regulated by Congress, the date of first use and the
date of first use in commerce will be the same date.
However, even though the two dates are the same, the
application must contain a statement of both the date of
first use and the date of first use in commerce.
DO I NEED A DRAWING?
The drawing is the part of the application which presents
the elements which constitute the mark sought to be
registered. The drawing is used to reproduce the mark in the
Official Gazette and in the registration certificate.
An application must include a drawing which conforms to
specific rules. There may not be more than one mark on a
drawing, since an application must be limited to one mark,
and the mark on the drawing must be a complete mark as shown
by the specimens. All drawings must be black and white with
no gray shading.
WHAT ARE SPECIMENS?
The Trademark Act requires an application to register a mark
to specify the mode or manner in which the mark is used in
connection with the goods. The mode or manner in which the
mark is used in connection with the goods is shown in the
application by means of specimens.
Specimens for goods may consist of samples of the material
used for labeling the goods in trade, or of photographs of
the labeled goods in the trade channel. Acceptable specimens
for services may include newspaper and magazine
advertisements as well as other types of advertising such as
brochures, billboards, handbills, direct-mail leaflets,
menus, etc. The type of material which is submitted as
specimens will vary in different applications depending on
the particular circumstances of each application. For each
class of goods or services three specimens must be filed in
an application.
WHAT ARE INTENT TO USE APPLICATIONS?
Intent to use applications are based on a bona fide intent
to use in commerce, but not having yet been used. These
applications differ from the actual use applications in that
the applicant has six months from the Notice of Allowance to
commence use in commerce and to file a declaration of such
use, with specimens, for goods or services identified in the
application. If the applicant has not yet used the mark in
commerce, a request for an extension of time for six months
may be filed.
PROSECUTION OF A TRADEMARK APPLICATION
Upon the filing of an application for registration and
payment of the required fees, the Commissioner shall refer
the application to an examiner. If on examination it appears
that the applicant is entitled to registration, the mark is
then published in the Official Gazette. A "Notice of
Publication" is then issued to applicant stating the date of
publication.
Any person who believes that he would be damaged by the
registration of a mark upon the principal register may file,
within thirty days after the publication, an opposition in
the PTO stating grounds therefor.
If the applicant is found not entitled to registration, the
examiner shall advise the applicant of the reason. The
applicant shall have a period of six months in which to
reply or amend his application, which shall then be
re-examined. This procedure may be repeated until (1) the
examiner finally refuses registration of the mark; or, (2)
the applicant fails for a period of six months to reply or
amend or appeal, whereupon the application shall be deemed
to have been abandoned.
DURATION OF REGISTRATION
Each certificate of registration shall remain in force for
ten years: Provided, that the registration of any mark shall
be canceled at the end of six years following its date,
unless within one year next preceding the expiration of such
six years the registrant shall file with the PTO an
affidavit showing that said mark is in use in commerce or
showing that its nonuse is due to special circumstances
which excuse such nonuse and is not due to any intention to
abandon the mark.
TRADEMARK DILUTION
Trademark or service mark dilution occurs when a junior, or
second, user's mark, used in connection with his goods or
services, dilutes the distinctive quality of the senior, or
first, user's mark. Remedies for trademark and service mark
dilution are available under both federal law, 15 U.S.C.
1125(c), and under Louisiana law, La.R.S. 51:223.1.
* Unless otherwise specified, all trademark information is
based upon federal trademark laws. Many states also their
own trademark laws, and these laws may differ from state to
state. Additionally, foreign trademarks are subject to the
laws and regulations of each individual country. RKKD can
assist in virtually all Trademark matters, including foreign
filings.
