From: "William H. Geiger III" <whgiii@invweb.net>
Date: Tue, 7 Oct 1997 07:45:59 +0800
To: cypherpunks@cyberpass.net
Subject: Trademarkes -- Basic Facts
Message-ID: <199710062339.TAA28240@users.invweb.net>
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Here is a copy of the Trademark Basic Facts from the PTO web site.

Notice that this is properly formated in multipart/alternative so it can
be viewed in both text/plain & text/html formats (perhaps one of these
days NS will get a clue).

-- 
---------------------------------------------------------------
William H. Geiger III  http://www.amaranth.com/~whgiii
Geiger Consulting    Cooking With Warp 4.0

Author of E-Secure - PGP Front End for MR/2 Ice
PGP & MR/2 the only way for secure e-mail.
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---------------------------------------------------------------

Basic Facts About Registering A Trademark


What is a Trademark?

A TRADEMARK is either a word, phrase, symbol or design, or combination of
words, phrases, symbols or designs, which identifies and distinguishes the
source of the goods or services of one party from those of others.  A
service mark is the same as a trademark except that it identifies and
distinguishes the source of a service rather than a product.  Throughout
this booklet the terms "trademark" and "mark" are used to refer to both
trademarks and service marks whether they are word marks or other types of
marks. Normally, a mark for goods appears on the product or on its
packaging, while a service mark appears in advertising for the services.

A trademark is different from a copyright or a patent.  A copyright protects
an original artistic or literary work; a patent protects an invention.  For
copyright information call the Library of Congress at (202) 707-3000.

Establishing Trademark Rights

Trademark rights arise from either (1) actual use of the mark, or (2) the
filing of a proper application to register a mark in the Patent and
Trademark Office (PTO) stating that the applicant has a bona fide intention
to use the mark in commerce regulated by the U.S. Congress.  (See below,
under "Types of Applications," for a discussion of what is meant by the
terms commerce and use in commerce.) Federal registration is not required to
establish rights in a mark, nor is it required to begin use of a mark.
However, federal registration can secure benefits beyond the rights acquired
by merely using a mark.  For example, the owner of a federal registration is
presumed to be the owner of the mark for the goods and services specified in
the registration, and to be entitled to use the mark nationwide.

There are two related but distinct types of rights in a mark:  the right to
register and the right to use. Generally, the first party who either uses a
mark in commerce or files an application in the PTO has the ultimate right
to register that mark.  The PTO's authority is limited to determining the
right to register. The right to use a mark can be more complicated to
determine.  This is particularly true when two parties have begun use of the
same or similar marks without knowledge of one another and neither has a
federal registration.  Only a court can render a decision about the right to
use, such as issuing an injunction or awarding damages for infringement.  It
should be noted that a federal registration can provide significant
advantages to a party involved in a court proceeding.  The PTO cannot
provide advice concerning rights in a mark.  Only a private attorney can
provide such advice.

Unlike copyrights or patents, trademark rights can last indefinitely if the
owner continues to use the mark to identify its goods or services.  The term
of a federal trademark registration is 10 years, with 10-year renewal terms. 
However, between the fifth and sixth year after the date of initial
registration, the registrant must file an affidavit setting forth certain
information to keep the registration alive.  If no affidavit is filed, the
registration is canceled.<p>

Types of Applications for Federal Registration

An applicant may apply for federal registration in three principal ways. 
(1) An applicant who has already commenced using a mark in commerce may file
based on that use (a "use" application).  (2) An applicant who has not yet
used the mark may apply based on a bona fide intention to use the mark in
commerce (an "intent-to-use" application).  For the purpose of obtaining
federal registration, commerce means all commerce which may lawfully be
regulated by the U.S. Congress, for example, interstate commerce or commerce
between the U.S. and another country.  The use in commerce must be a bona
fide use in the ordinary course of trade, and not made merely to reserve a
right in a mark.  Use of a mark in promotion or advertising before the
product or service is actually provided under the mark on a normal
commercial scale does not qualify as use in commerce.  Use of a mark in
purely local commerce within a state does not qualify as "use in commerce."
If an applicant files based on a bona fide intention to use in commerce, the
applicant will have to use the mark in commerce and submit an allegation of
use to the PTO before the PTO will register the mark (See page 12).  (3)
Additionally, under certain international agreements, an applicant from
outside the United States may file in the United States based on an
application or registration in another country.  For information regarding
applications based on international agreements please call the information
number provided on page 4.

A United States registration provides protection only in the United States
and its territories.  If the owner of a mark wishes to protect a mark in
other countries, the owner must seek protection in each country separately
under the relevant laws.  The PTO cannot provide information or advice
concerning protection in other countries.  Interested parties may inquire
directly in the relevant country or its U.S. offices or through an
attorney.

Who May File an Application?

The application must be filed in the name of the owner of the mark; usually
an individual, corporation or partnership.  The owner of a mark controls the
nature and quality of the goods or services identified by the mark.  See
below in the line-by-line instructions for information about who must sign
the application and other papers.

The owner may submit and prosecute its own application for registration, or
may be represented by an attorney.  The PTO cannot help select an
attorney.

Foreign Applicants

Applicants not living in the United States must designate in writing the
name and address of a domestic representative -- a person residing in the
United States "upon whom notices of process may be served for proceedings
affecting the mark." The applicant may do so by submitting a statement that
the named person at the address indicated is appointed as the applicant's
domestic representative under º1(e) of the Trademark Act.  The applicant
must sign this statement.  This person will receive all communications from
the PTO unless the applicant is represented by an attorney in the United
States.

Searches for Conflicting Marks

An applicant is not required to conduct a search for conflicting marks prior
to applying with the PTO. However, some people find it useful.  In
evaluating an application, an examining attorney conducts a search and
notifies the applicant if a conflicting mark is found.  The application fee,
which covers processing and search costs, will not be refunded even if a
conflict is found and the mark cannot be registered.

To determine whether there is a conflict between two marks, the PTO
determines whether there would be likelihood of confusion, that is, whether
relevant consumers would be likely to associate the goods or services of one
party with those of the other party as a result of the use of the marks at
issue by both parties. The principal factors to be considered in reaching
this decision are the similarity of the marks and the commercial
relationship between the goods and services identified by the marks.  To
find a conflict, the marks need not be identical, and the goods and services
do not have to be the same.

The PTO does not conduct searches for the public to determine if a
conflicting mark is registered, or is the subject of a pending application,
except as noted above when acting on an application.  However, there are a
variety of ways to get this same type of information.  First, by performing
a search in the PTO public search library.  The search library is located on
the second floor of the South Tower Building, 2900 Crystal Drive, Arlington,
Virginia 22202.  Second, by visiting a patent and trademark depository
library (at locations listed on pages 14 and 15).  These libraries have
CD-ROMS containing the trademark database of registered and pending marks. 
Finally, either a private trademark search company, or an attorney who deals
with trademark law, can provide trademark registration information.  The PTO
cannot provide advice about possible conflicts between marks.

Laws & Rules Governing Federal Registration

The federal registration of trademarks is governed by the Trademark Act of
1946, as amended, 15 U.S.C. º1051 et seq.; the Trademark Rules, 37 C.F.R.
Part 2; and the Trademark Manual of Examining Procedure (2d ed. 1993).

Other Types of Applications

In addition to trademarks and service marks, the Trademark Act provides for
federal registration of other types of marks, such as certification marks,
collective trademarks and service marks, and collective membership marks. 
These types of marks are relatively rare.  For forms and information
regarding the registration of these marks, please call the appropriate
trademark information number indicated below.

Where to Send the Application and Correspondence

The application and all other correspondence should be addressed to "The
Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington,
Virginia 22202-3513." The initial application should be directed to "Box NEW
APP / FEE." An AMENDMENT TO ALLEGE USE should be directed to "Attn. AAU." A
STATEMENT OF USE or REQUEST FOR AN EXTENSION OF TIME TO FILE A STATEMENT OF
USE should be directed to "Box ITU / FEE." (See page 5 for an explanation of
these terms.)

The applicant should indicate its telephone number on the application form. 
Once a serial number is assigned to the application, the applicant should
refer to the serial number in all written and telephone communications
concerning the application.

It is advisable to submit a stamped, self-addressed postcard with the
application specifically listing each item in the mailing, that is, the
written application, the drawing, the fee, and the specimens (if
appropriate).  The PTO will stamp the filing date and serial number of the
application on the postcard to acknowledge receipt.  This will help the
applicant if any item is later lost or if the applicant wishes to inquire
about the application.  The PTO will send a separate official notification
of the filing date and serial number for every application about two months
after receipt.

Use of the "TM," "SM" and "&reg;" Symbols

Anyone who claims rights in a mark may use the TM (trademark) or SM (service
mark) designation with the mark to alert the public to the claim.  It is not
necessary to have a registration, or even a pending application, to use
these designations.  The claim may or may not be valid.  The registration
symbol, &reg;, may only be used when the mark is registered in the PTO.  It is
improper to use this symbol at any point before the registration issues. 
Please omit all symbols from the mark in the drawing you submit with your
application; the symbols are not considered part of the mark.

Title: 
Basic Facts About Registering A Trademark







 




Basic Facts About Registering A Trademark



What is a Trademark?

A TRADEMARK is either a word, phrase, symbol or design, or combination of
words, phrases, symbols or designs, which identifies and distinguishes the
source of the goods or services of one party from those of others.  A
service mark is the same as a trademark except that it identifies and
distinguishes the source of a service rather than a product.  Throughout
this booklet the terms "trademark" and "mark" are used to refer to both
trademarks and service marks whether they are word marks or other types of
marks. Normally, a mark for goods appears on the product or on its
packaging, while a service mark appears in advertising for the services.

A trademark is different from a copyright or a patent.  A copyright protects
an original artistic or literary work; a patent protects an invention.  For
copyright information call the Library of Congress at (202) 707-3000.

Establishing Trademark Rights

Trademark rights arise from either (1) actual use of the mark, or (2) the
filing of a proper application to register a mark in the Patent and
Trademark Office (PTO) stating that the applicant has a bona fide intention
to use the mark in commerce regulated by the U.S. Congress.  (See below,
under "Types of Applications," for a discussion of what is meant by the
terms commerce and use in commerce.) Federal registration is not required to
establish rights in a mark, nor is it required to begin use of a mark.
However, federal registration can secure benefits beyond the rights acquired
by merely using a mark.  For example, the owner of a federal registration is
presumed to be the owner of the mark for the goods and services specified in
the registration, and to be entitled to use the mark nationwide.

There are two related but distinct types of rights in a mark:  the right to
register and the right to use. Generally, the first party who either uses a
mark in commerce or files an application in the PTO has the ultimate right
to register that mark.  The PTO's authority is limited to determining the
right to register. The right to use a mark can be more complicated to
determine.  This is particularly true when two parties have begun use of the
same or similar marks without knowledge of one another and neither has a
federal registration.  Only a court can render a decision about the right to
use, such as issuing an injunction or awarding damages for infringement.  It
should be noted that a federal registration can provide significant
advantages to a party involved in a court proceeding.  The PTO cannot
provide advice concerning rights in a mark.  Only a private attorney can
provide such advice.

Unlike copyrights or patents, trademark rights can last indefinitely if the
owner continues to use the mark to identify its goods or services.  The term
of a federal trademark registration is 10 years, with 10-year renewal terms. 
However, between the fifth and sixth year after the date of initial
registration, the registrant must file an affidavit setting forth certain
information to keep the registration alive.  If no affidavit is filed, the
registration is canceled.

Types of Applications for Federal Registration

An applicant may apply for federal registration in three principal ways. 
(1) An applicant who has already commenced using a mark in commerce may file
based on that use (a "use" application).  (2) An applicant who has not yet
used the mark may apply based on a bona fide intention to use the mark in
commerce (an "intent-to-use" application).  For the purpose of obtaining
federal registration, commerce means all commerce which may lawfully be
regulated by the U.S. Congress, for example, interstate commerce or commerce
between the U.S. and another country.  The use in commerce must be a bona
fide use in the ordinary course of trade, and not made merely to reserve a
right in a mark.  Use of a mark in promotion or advertising before the
product or service is actually provided under the mark on a normal
commercial scale does not qualify as use in commerce.  Use of a mark in
purely local commerce within a state does not qualify as "use in commerce."
If an applicant files based on a bona fide intention to use in commerce, the
applicant will have to use the mark in commerce and submit an allegation of
use to the PTO before the PTO will register the mark (See page 12).  (3)
Additionally, under certain international agreements, an applicant from
outside the United States may file in the United States based on an
application or registration in another country.  For information regarding
applications based on international agreements please call the information
number provided on page 4.

A United States registration provides protection only in the United States
and its territories.  If the owner of a mark wishes to protect a mark in
other countries, the owner must seek protection in each country separately
under the relevant laws.  The PTO cannot provide information or advice
concerning protection in other countries.  Interested parties may inquire
directly in the relevant country or its U.S. offices or through an
attorney.

Who May File an Application?

The application must be filed in the name of the owner of the mark; usually
an individual, corporation or partnership.  The owner of a mark controls the
nature and quality of the goods or services identified by the mark.  See
below in the line-by-line instructions for information about who must sign
the application and other papers.

The owner may submit and prosecute its own application for registration, or
may be represented by an attorney.  The PTO cannot help select an
attorney.

Foreign Applicants

Applicants not living in the United States must designate in writing the
name and address of a domestic representative -- a person residing in the
United States "upon whom notices of process may be served for proceedings
affecting the mark." The applicant may do so by submitting a statement that
the named person at the address indicated is appointed as the applicant's
domestic representative under §1(e) of the Trademark Act.  The applicant
must sign this statement.  This person will receive all communications from
the PTO unless the applicant is represented by an attorney in the United
States.

Searches for Conflicting Marks

An applicant is not required to conduct a search for conflicting marks prior
to applying with the PTO. However, some people find it useful.  In
evaluating an application, an examining attorney conducts a search and
notifies the applicant if a conflicting mark is found.  The application fee,
which covers processing and search costs, will not be refunded even if a
conflict is found and the mark cannot be registered.

To determine whether there is a conflict between two marks, the PTO
determines whether there would be likelihood of confusion, that is, whether
relevant consumers would be likely to associate the goods or services of one
party with those of the other party as a result of the use of the marks at
issue by both parties. The principal factors to be considered in reaching
this decision are the similarity of the marks and the commercial
relationship between the goods and services identified by the marks.  To
find a conflict, the marks need not be identical, and the goods and services
do not have to be the same.

The PTO does not conduct searches for the public to determine if a
conflicting mark is registered, or is the subject of a pending application,
except as noted above when acting on an application.  However, there are a
variety of ways to get this same type of information.  First, by performing
a search in the PTO public search library.  The search library is located on
the second floor of the South Tower Building, 2900 Crystal Drive, Arlington,
Virginia 22202.  Second, by visiting a patent and trademark depository
library (at locations listed on pages 14 and 15).  These libraries have
CD-ROMS containing the trademark database of registered and pending marks. 
Finally, either a private trademark search company, or an attorney who deals
with trademark law, can provide trademark registration information.  The PTO
cannot provide advice about possible conflicts between marks.

Laws & Rules Governing Federal Registration

The federal registration of trademarks is governed by the Trademark Act of
1946, as amended, 15 U.S.C. §1051 et seq.; the Trademark Rules, 37 C.F.R.
Part 2; and the Trademark Manual of Examining Procedure (2d ed. 1993).

Other Types of Applications

In addition to trademarks and service marks, the Trademark Act provides for
federal registration of other types of marks, such as certification marks,
collective trademarks and service marks, and collective membership marks. 
These types of marks are relatively rare.  For forms and information
regarding the registration of these marks, please call the appropriate
trademark information number indicated below.

Where to Send the Application and Correspondence

The application and all other correspondence should be addressed to "The
Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington,
Virginia 22202-3513." The initial application should be directed to "Box NEW
APP / FEE." An AMENDMENT TO ALLEGE USE should be directed to "Attn. AAU." A
STATEMENT OF USE or REQUEST FOR AN EXTENSION OF TIME TO FILE A STATEMENT OF
USE should be directed to "Box ITU / FEE." (See page 5 for an explanation of
these terms.)

The applicant should indicate its telephone number on the application form. 
Once a serial number is assigned to the application, the applicant should
refer to the serial number in all written and telephone communications
concerning the application.

It is advisable to submit a stamped, self-addressed postcard with the
application specifically listing each item in the mailing, that is, the
written application, the drawing, the fee, and the specimens (if
appropriate).  The PTO will stamp the filing date and serial number of the
application on the postcard to acknowledge receipt.  This will help the
applicant if any item is later lost or if the applicant wishes to inquire
about the application.  The PTO will send a separate official notification
of the filing date and serial number for every application about two months
after receipt.

Use of the "TM," "SM" and "(r)" Symbols

Anyone who claims rights in a mark may use the TM (trademark) or SM (service
mark) designation with the mark to alert the public to the claim.  It is not
necessary to have a registration, or even a pending application, to use
these designations.  The claim may or may not be valid.  The registration
symbol, (r), may only be used when the mark is registered in the PTO.  It is
improper to use this symbol at any point before the registration issues. 
Please omit all symbols from the mark in the drawing you submit with your
application; the symbols are not considered part of the mark.










Last Modified:  31 July 1995











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