DefinitionsWhat is a servicemark?
A servicemark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a servicemark is a brand name. For example, some of the well-known servicemarks include Coca-Cola for soft drinks, Yahoo! for Internet Search Engine, Kodak for film, and Rolex for watches.
What is a service mark?
A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.
What is a certification mark?
A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.
What is a collective mark?
A collective mark is a servicemark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.
1. Constructive notice
nationwide of the servicemark owner's claim.
No. However, an applicant's citizenship must be set forth in the record. If an applicant is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, then the applicant must choose which citizenship will be printed in the Official Gazette and on the certificate of registration.
The federal registration symbol may be used once the mark is actually registered in the U.S. Patent and Servicemark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal servicemark registration. [Note: Several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.]
Is a federal registration valid outside the United States?
No. However, if you are a qualified owner of a servicemark application pending before the USPTO, or of a registration issued by the USPTO, you may seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application," with the International Bureau of the World Property Intellectual Organization, through the USPTO. For more information about the Madrid Protocol, click here.
Also, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties. See TMEP Chapter 1000 for further information. The laws of each country regarding registration must be consulted.
What are common law rights?
Federal registration is not required to establish rights in a servicemark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Servicemark Office has the ultimate right to use and registration.
What do "TM," "SM" & "®" Mean?
The symbols ®, TM and SM provide notice to the world that you are claiming servicemark rights in any mark using these symbols. You may use the TM on marks identifying goods, and the SM on marks identifying services. You need not have a federal or state registration to use the TM or SM symbols. However, the ® symbol, which provides "statutory notice" can only be used if your mark is federally registered.
How Do I Get Servicemark Rights?
To own a servicemark in the United States all you need to do is be the first to use it in trade and make continuous use of the mark thereafter. In addition, you need to make proper use of it (1) to use it in interstate commerce, and (2) in a way that permits consumers to distinguish your particular goods and services from those of another producer. Servicemarks that are registered with the federal government receive federal statutes which provide benefits beyond the protection available under the common law.
I want to protect the name Blue Widget. Do I need to file "Blue Widget", "Blue Widgets", and "BlueWidget" as three separate marks?
It is not necessary to file all three "Blue Widget", "Blue Widgets", and "BlueWidget" separately since there is a strong correlation by a dominant name, Blue Widget. You, of course, can file all three if you want. However, when a servicemark search is performed for conflicting names one looks not only for the exact match, but also anything similar in appearance and sound that might create confusion (i.e. cat, cats, kat, etc). Therefore, when you register a singular name, it is very hard for someone else to register the plural name. For example, if you file and register the wording "Blue Widget" it would be strongly similar to the other two mark names.
Should I servicemark the domain name BlueWidget.com?
The USPTO is stricter in allowing domain names to be registered as servicemark. In general, filing "Blue Widget" as a mark is easier to get than "BLUEWIDGET.COM". It can happen in some cases, such as Amazon.com, because that name is perceived by consumers as a source identifier. But in general, the USPTO is strict in allowing domain names to function as servicemarks. According to the USPTO's Examination Guide No. 2-99, a mark composed of a domain name is registrable as a servicemark or service mark only if it functions as a source identifier. The mark must be presented in a manner that will be perceived by potential purchasers as indicating source and not merely an informational indication of the domain name address used to access a web site. If the proposed mark is used in any way that would be perceived as nothing more than an address at the applicant can be contacted, registration will be refused by the USPTO.
You can fill out a servicemark application online here.
Who may file an application?
Only the owner of the servicemark may file an application for its registration. An application filed by a person who is not the owner of the mark will be declared 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 is a specimen?
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 servicemark. For a service mark, specimens may be advertising such as magazine advertisements or brochures. Actual specimens, rather than facsimiles, are preferred. However, if the actual specimens are bulky, or larger than 8½" x 11", then the applicant must submit facsimiles, (e.g., photographs or good photocopies) of the specimens. Facsimiles may not exceed 8½" x 11". ONE SPECIMEN IS REQUIRED FOR EACH CLASS OF GOODS OR SERVICES SPECIFIED IN THE APPLICATION.
Specimens are required in applications based on actual use in commerce, Section 1(a), 15 U.S.C. §1051(a), and must be filed with the Amendment to Allege Use, 15 U.S.C. §1051(c) , or the Statement of Use, 15 U.S.C. §1051(d), in applications based on a bona fide intention to use the mark in commerce, Section 1(b), 15 U.S.C. §1051(b). Specimens are not required for applications based on a foreign application or registration under Section 44 of the Servicemark Act, 15 U.S.C. §1126, or for applications based on an extension of protection of an international registration to the United States under Section 66(a) of the Servicemark Act, 15 U.S.C. §1141f.
What is the drawing?
The "drawing" is a page which depicts the mark 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, 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 foreign application or foreign registration, Sections 44(d) or 44(e), 15 U.S.C. §§1126(d) or (e), the drawing must depict the mark as it appears or will appear on the foreign registration. The applicant cannot register more than one mark in a single application. Therefore, the drawing must display only one mark.
If an applicant submits a specimen, is a drawing still required?
Yes. A drawing is required in all applications, and is used by the Office for several purposes, including printing the mark in the Official Gazette, and on the registration certificate. A specimen, on the other hand, is required as evidence that a mark is in actual use in commerce.
On what bases can a foreign applicant file an application for registration?
How long does it take for a mark to be registered?
It is difficult to predict how long it will take for an application to mature into a registration, because there are so many factors that can affect the process. Generally,
an applicant receives a filing receipt approximately four weeks after filing the application. The filing receipt will include the serial number of the application and more importantly a filing date. All future correspondence with the U.S. Servicemark Office must include this serial number. You should receive a response regarding the application outcome within four to six months from the filing date. The total time for the U.S. Servicemark Office to complete an application and issue a Certification of Registration may be anywhere from eight months to a year if everything goes smoothly. However, the important thing is to file the servicemark so you receive a filing date. The filing date is important because if anyone submits a similar mark, the applicant with the earliest filing date generally has priority in the filing process.
How long does a servicemark registration last?
For a servicemark registration to remain valid, an Affidavit of Use ("Section 8 Affidavit") must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee.
The registrant must also file a §9 renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee.
Assuming that an affidavit of use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term.
This is also true for the renewal periods; renewals granted PRIOR to November 16, 1989 have a 20-year term, and renewals granted on or after November 16, 1989 have a 10-year term.
When did the renewal period change from twenty to ten years?
November 16, 1989. Registrations issued on or after November 16, 1989 have a ten-year term, renewable every ten years.
How long does an Intent-to-Use applicant have to allege actual use of the mark in commerce?
An applicant may file an Amendment to Allege Use any time between the filing date of the application and the date the Examining Attorney approves the mark for publication. If an Amendment to Allege Use is not filed, then applicant has six months from the issuance of the Notice of Allowance to file a Statement of Use, unless the applicant requests and is granted an extension of time. If the applicant fails to file either an Amendment to Allege Use or a Statement of Use within the time limits allowed, then the application will be declared abandoned. No registration will be granted.
What are the different
classes of goods and services?