• Buskop Law Group | Trademarks

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WHAT IS A TRADEMARK?

A trademark is a word, 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.

Filing a trademark can be intimidating, but it does not have to be. The Buskop Law Group strives to give the most approachable, effective, enjoyable, and friendly experience during your trademark process.

THERE ARE FOUR BASIC REASONS TO REGISTER YOUR TRADEMARK

  1. The registered mark can be an asset,
  2. The registered mark can be licensed for additional income,
  3. The registered mark can be used as a marketing tool to obtain media interest, and
  4. The registered mark can be used to stop competitors from using a similar name, logo or slogan for similar or related goods and/or services.

U.S. FEDERAL TRADEMARKS
The United States Patent and Trademark Office (USPTO) is the only source for a federal trademark in the United States, which covers all 50 states and territories under United States. jurisdiction.

Federal trademarks are important to businesses which conduct commerce across state lines or outside the United States; in other words those which are engaged in interstate commerce.

STATE TRADEMARKS
You should file a State Trademark or Service Mark Application for those goods and services that you are only selling within a specific state jurisdiction; in other words, when you are only engaging in intrastate commerce.  Generally you have to actually be using the mark in conjunction with the goods and services within the specific state jurisdiction.

Each state in the U.S., such as Texas, Florida or California, has a state trademark office which grants a state trademark within their 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 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.
WHO MAY FILE AN TRADEMARK APPLICATION?
Only the owner of the trademark may file an application for 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 TYPE OF WORDS CAN BE TRADEMARKED?
Word marks that are inherently distinctive of the goods and services can be trademarked, because they function to uniquely identify the commercial source of origin of the goods sold and services rendered in the marketplace (ex. Kodak® for camera and film).

Words that are generic of the goods and/or services can not be trademarked.  Words that are merely descriptive of the goods and/or services have lower trademark value.

Words that do not merely describe the goods or services 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 six years.  Then the trademark can become distinctive by showing the mark has acquired a secondary meaning.

 

WORDS THAT WILL NOT CAUSE ‘LIKELIHOOD OF CONFUSION” WITH SOMEONE ELSE’S REGISTERED MARK CAN BE REGISTERED
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 on the basis of there being a likelihood of confusion with the “STARWOMAN” trademark.
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, but has a bona fide intention to do so.  Interstate use is the sale or transfer of products or the rendering of services over state lines or national boundaries.

However, if the 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.

 

COMMON 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 falsely suggests a connection with a person (living or dead), an institution, a belief or national symbols.
  5. The proposed mark consists of a name, portrait or signature identifying a particular living individual, except by that individual’s written consent.
  6. The proposed mark consists of a flag or coat of arms, or other insignia of the United States or of any state or municipality, or of any foreign nation.
  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 an applicants 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 the 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 three months.  However, the total time for an application to be processed may be anywhere from almost one year to several years, depending on the basis of the filing and the legal issues which may arise in the examination of the application.

TRADEMARK CLASSIFICATIONS:

Class Description
1 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

 

2 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

 

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; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks

 

5 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

 

6 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; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

 

7 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

 

8 Hand tools and implements (hand operated); cutlery; side arms; razors

 

9 Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving 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

 

10 Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials

 

11 Apparatus 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; explosives; fireworks

 

14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments

 

15 Musical instruments

 

16 Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding 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.

 

17 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

 

18 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

 

19 Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal

 

20 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

 

21 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; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes

 

22 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

 

23 Yarns and threads, for textile use

 

24 Textiles and textile goods, not included in other classes; bed and table covers

 

25 Clothing, footwear, headgear.

 

26 Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers

 

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

 

28 Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees

 

29 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

 

30 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

 

31 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

 

32 Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

 

33 Alcoholic beverages (except beers)

 

34 Tobacco; smokers’ articles; matches

 

35 Advertising; business management; business administration; office functions

 

36 Insurance; financial affairs; monetary affairs; real estate affairs

 

37 Building construction; repair; installation services

 

38 Telecommunications

 

39 Transport; packaging and storage of goods; travel arrangement

 

40 Treatment of materials

 

41 Education; providing of training; entertainment; sporting and cultural activities

 

42-45 Providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming; services that cannot be placed in other classes