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Trademarks

AuthorHouse

Contents

DisclaimerChapter I Introduction To TrademarksWhat Is A Trademark?..................................................................1Benefit Of Federal Registration Of A Trademark........................................3Chapter II Selection Of The Right TrademarkImportant Tips For Choosing The Right Mark............................................8Checklist.............................................................................12Chapter III Conducting A Trademark SearchKinds Of Searches.....................................................................14Registrability Search At U.S. PTO.....................................................15Trademark Search At WIPO..............................................................16Chapter IV Electronic Filing Of A Trademark ApplicationBenefits Of Electronic Filing.........................................................17Step By Step Instructions For Filing A Trademark Application..........................18Chapter V Responding To An Office Action - With Sample ResponsesResponses To Trademark Rejections.....................................................21Sample Responses To An Office Action..................................................23Chapter VI Maintaining Trademark RegistrationDeclaration Of Continued Use (Section 8 Affidavit)....................................32Declaration Of Incontestabilty (Section 15 Affidavit).................................33Renewal Of Registration...............................................................34Chapter VII Trademark OppositionTrademark Opposition Procedure........................................................36Abandonment Of The Mark As A Ground Of Opposition.....................................37Fraud As A Ground Of Opposition.......................................................37Trademark Dilution As A Ground Of Opposition..........................................38Defenses To An Opposition Proceeding..................................................39Notice Of Opposition..................................................................40Chapter VIII International Trademark ApplicationsThe Madrid Protocol...................................................................45Member Countries Of The WIPO..........................................................48Schedule Of Fees......................................................................49Individual Country Fees...............................................................54Chapter IX International Classification Of Marks.....................................62Chapter X Sample Specimens...........................................................67Table Of Authorities..................................................................69

Chapter One

Trademarks in the form of words, symbols and designs, mark possession over a particular product or service. Trademarks have been used since the very beginning of human civilization. The most distinguished marks were found in the Roman era where manufactured bricks were stamped with seals to identify ownership. Human history is filled with marks found on cave walls, ceramic stamps on pottery, stone seals and many more.

Common law trademark dates back to the year 1266 in England, to the law known as the "bakers marking law" where bakers would mark the bread that they baked for sale. This common law developed into our current trademark law. With a history that dates back to the medieval ages, it is not surprising that trademarks are used today by almost all businesses today to distinguish their product or services from of its competitors.

WHAT IS A TRADEMARK?

Trademark

Amongst the various definitions of a trademark, the definition given by the United States Patent and Trademark Office (U.S. PTO) is probably the most comprehensive. The U.S. PTO defines a trademark as ".. a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others."

To put it simply, a trademark identifies the source or origin of goods or services and distinguishes it from a competitor's product or services. Therefore, a trademark represents the goodwill of a product or service and grants the owner of the trademark the right to prevent others from using the same or a confusingly similar mark for similar goods or services.

More than one trademark may be used by an entity to identify the source or origin of goods or services. For example, Coca-Cola[R], Coke[R]and It's the Real Thing[R] are registered trademarks of the Coca-Cola Company and are used to identify the Coca-Cola beverage.

Service Mark

When a trademark is used in association with services of a product and not goods, the mark is termed a service mark. For example, a service mark would be used by a dry-cleaning service, an accounting service, a restaurant, etc. to identify the service rather than the goods they market.

As used in this book, the terms "trademark" and "mark" refer to both trademarks and services marks.

Logo

A logo is a graphical sign or representation which together with its unique typeset forms a trademark. When a word that is descriptive of goods or services cannot be trademarked, it may be possible to get protection for that word when the word is dressed up as a graphical mark and the word is disclaimed from the mark. The graphical representation of the word may make the word distinctive. Disclaiming a word means that the applicant will not claim protection or right to the disclaimed word apart from the mark. An example of a logo is Apple Inc.'s logo of an apple with a bite.

Trade name

A trade name is a trademark for the name of an entity or business. A trade name cannot be registered as a federal trademark if the trade name identifies the origin or source of goods or services. For example, the tradename Coca-Cola[R] is registrable as a trademark for the Coca-Cola brand of beverage.

Collective Mark

A collective mark is usually owned by an association or organization, the members of which use the mark to distinguish their goods or services from the goods or services of other associations or organizations. For example, the collective mark CA[R] is used by accountants to identify their membership in the Institute of Chartered Accountants, and the collective mark Realtor[R] is used by real estate agents to identify their membership in real estate services provided under this mark.

Certification Mark

Some manufacturers or organizations use a mark called a "certification mark" to certify that goods or services provided under the certification mark comply with the requirements of the manufacturer or organization and are accredited by that organization. A certification mark may be displayed on the product of the manufacturer as a certification of such compliance with the regulations of an organization. A certification mark is typically owned by an organization and licensed to entities that comply with the owner's requirements. The Good Housekeeping Seal Of Approval for home products is an example of a certification mark

Trade Dress

A trade dress refers to the visual...