Frequently Asked Questions About Trademarks
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CONTENTS

Definitions

Basic Questions

Searching

Trademarks, Patents and Copyrights

Application Process

Other

Definitions

What is a trademark?

A trademark 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 trademark is a brand name.

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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.

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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.

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What is a collective mark?

A collective mark is a trademark 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.

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Basic Questions

Do I need to register my trademark?

No. However, federal registration has several advantages including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.

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What are the benefits of federal trademark registration?

1. Constructive notice nationwide of the trademark owner's claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration can be used as a basis for obtaining registration in foreign countries.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

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Do I have to be a U.S. citizen to obtain a federal registration?

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. You must have a domestic representative if you or your company does not reside in the United States of America. Avanti Merchant Services provides domestic representation services.

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Are there federal regulations governing the use of the designations "TM" or "SM" with trademarks?

No. Use of the symbols "TM" or "SM" (for trademark and service mark, respectively) may, however, be governed by local, state, or foreign laws and the laws of the pertinent jurisdiction must be consulted. These designations usually indicate that a party claims rights in the mark and are often used before a federal registration is issued.

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When is it proper to use the federal registration symbol (the letter R enclosed within a circle -- ® -- with the mark.

The federal registration symbol may be used once the mark is actually registered in the U.S. Trademark 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 trademark 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.]

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Do I need an attorney to file a trademark application?

No, although it may be desirable to employ someone who is familiar with trademark matters
such as Avanti Merchant Services.  If you or your company is not located within the United States of America, you will need to have a domestic representative. If you or your company is not located in Canada, you will need our domestic representative services.

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What constitutes interstate commerce?

For goods, "Interstate commerce" involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "interstate commerce" involves offering a service to those in another state or rendering a service which affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).

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How do I find out whether a mark is already registered?

Go to http://www.avanticorp.net/trademarks/faxorder.html/faxorder.html fill out the form and a complete search will be processed for you and the results sent back to you via email.

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Is a federal registration valid outside the United States?

No. Certain countries, however, do recognize a United States registration as a basis for registering the mark in those countries. Many countries maintain a register of trademarks. The laws of each country regarding registration must be consulted.  We also provide trademark registration services in Canada as well.

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What are the guidelines regarding Internet domain name trademarks?

MARKS COMPOSED, IN WHOLE OR IN PART, OF DOMAIN NAMES
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I. Introduction And Background

A domain name is part of a Uniform Resource Locator (URL), which is the address of a site or document on the Internet. In general, a domain name is comprised of a second-level domain, a "dot," and a top-level domain  (TLD). The wording to the left of the "dot" is the second-level domain, and the wording to the right of the "dot" is  the TLD.

Example: If the domain name is "XYZ.COM," the term "XYZ" is a second-level domain and the 
term "COM" is a TLD.

A domain name is usually preceded in a URL by "http://www." The "http://" refers to the protocol used to transfer  information, and the "www" refers to World Wide Web, a graphical hypermedia interface for viewing and  exchanging information. There are two types of TLDs: generic and country code.

Generic TLDs

Generic TLDs are designated for use by the public. Each generic TLD is intended for use by a certain type of  organization. For example, the TLD ".com" is for use by commercial, for profit organizations. However, the  administrator of the .com, .net, .org and .edu TLDs does not check the requests of parties seeking domain names 
to ensure that such parties are a type of organization that should be using those TLDs. On the other hand, .mil,  .gov, and .int TLD applications are checked, and only the U.S. military, the U.S. government, or international  organizations are allowed in the domain space. The following is a list of the current generic TLDs and the intended users:

.com commercial, for profit organizations
.edu 4 year, degree granting colleges/universities
.gov U.S. federal government agencies
.int international organizations
.mil U.S. military organizations, even if located outside the U.S.
.net network infrastructure machines and organizations
.org miscellaneous, usually non-profit organizations and individuals


Country Code TLDs

Country code TLDs are for use by each individual country. Each country determines who may use their code. For  example, some countries require that users of their code be citizens or have some association with the country,  while other countries do not. The following are examples of some of the country code TLDs currently in use:

.jp for use by Japan
.tm for use by Turkmenistan
.tv for use by Tuvalu
.uk for use by the United Kingdom

Proposed TLDs

Due to growing space limitations, several new TLDs have been proposed, including the following:

.arts cultural and entertainment activities
.firm businesses
.info entities providing information services
.nom individual or personal nomenclature
.rec recreation or entertainment activities
.store businesses offering goods to purchase
.web entities emphasizing activities related to the web

While these proposed TLDs are not currently used on the Internet as TLDs, applicants may include them in their  marks.

Applications for registration of marks composed of domain names
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Since the implementation of the domain name system, the Patent and Trademark Office (Office) has received a  growing number of applications for marks composed of domain names. While the majority of domain name  applications are for computer services such as Internet content providers (organizations that provide web sites with  information about a particular topic or field) and online ordering services, a substantial number are for marks used  on other types of services or goods.

When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a  domain name, neither the beginning of the URL (http://www.) nor the TLD have any source indicating significance.  Instead, those designations are merely devices that every Internet site provider must use as part of its address.  Today, advertisements for all types of products and services routinely include a URL for the web site of the  advertiser. Just as the average person with no special knowledge recognizes "800" or "1-800" followed by seven 
digits or letters as one of the prefixes used for every toll-free phone number, the average person familiar with the  Internet recognizes the format for a domain name and understands that "http," "www," and a TLD are a part of  every URL.

Applications for registration of marks consisting of domain names are subject to the same requirements as all other  applications for federal trademark registration. This Examination Guide identifies and discusses some of the issues  that commonly arise in the examination of domain name mark applications.

II. Use as a Mark

A. Use Applications
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A mark composed of a domain name is registerable as a trademark or service mark only if it functions as a source  identifier. The mark as depicted on the specimens must be presented in a manner that will be perceived by  potential purchasers as indicating source and not as merely an informational indication of the domain name address  used to access a web site. See In re Eilberg, 49 USPQ2d 1955 (TTAB 1998).

In Eilberg, the Trademark Trial and Appeal Board (Board) held that a term that only serves to identify the  applicant’s domain name or the location on the Internet where the applicant’s web site appears, and does not  separately identify applicant’s services, does not function as a service mark. The applicant’s proposed mark was  WWW.EILBERG.COM , and the specimens showed that the mark was used on letterhead and business cards in 
the following manner:

The Board affirmed the examining attorney’s refusal of registration on the ground that the matter presented for  registration did not function as a mark, stating that:

[T]he asserted mark, as displayed on applicant's letterhead, does not function as a service mark 
identifying and distinguishing applicant's legal services and, as presented, is not capable of doing so. 
As shown, the asserted mark identifies applicant's Internet domain name, by use of which one can 
access applicant's Web site. In other words, the asserted mark WWW.EILBERG.COM merely 
indicates the location on the Internet where applicant's Web site appears. It does not separately 
identify applicant's legal services as such. Cf. In re The Signal Companies, Inc., 228 USPQ 956 
(TTAB 1986).

This is not to say that, if used appropriately, the asserted mark or portions thereof may not be 
trademarks or [service marks]. For example, if applicant's law firm name were, say, 
EILBERG.COM and were presented prominently on applicant's letterheads and business cards as 
the name under which applicant was rendering its legal services, then that mark may well be 
registrable.

Id. at 1956.

The examining attorney must review the specimens in order to determine how the proposed mark is actually  used. It is the perception of the ordinary customer that determines whether the asserted mark functions as a mark,  not the applicant's intent, hope or expectation that it do so. See In re Standard Oil Co., 275 F.2d 945, 125  USPQ 227 (C.C.P.A. 1960).

If the proposed mark is used in a way that would be perceived as nothing more than an address at which the  applicant can be contacted, registration must be refused. Examples of a domain name used only as an Internet  address include a domain name used in close proximity to language referring to the domain name as an address, or  a domain name displayed merely as part of the information on how to contact the applicant.

Example: The mark is WWW.XYZ.COM for on-line ordering services in the field of
clothing. Specimens of use consisting of an advertisement that states "visit us on the web
at www.xyz.com" do not show service mark use of the proposed mark.

Example: The mark is XYZ.COM for financial consulting services. Specimens of use
consisting of a business card that refers to the service and lists a phone number, fax
number, and the domain name sought to be registered do not show service mark use of
the proposed mark.

Refusal of registration

If the specimens of use fail to show the domain name used as a mark and the applicant seeks registration on the  Principal Register, the examining attorney must refuse registration on the ground that the matter presented for  registration does not function as a mark. The statutory bases for the refusals are:

If the applicant seeks registration on the Supplemental Register, the examining attorney must refuse registration  under Trademark Act §23, 15 U.S.C. §1091.

B. Advertising One’s Own Products or Services on the Internet is not a Service
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Advertising one’s own products or services is not a service. See In re Reichhold Chemicals, Inc., 167 USPQ  376 (TTAB 1970); TMEP §1301.01(a)(ii). Therefore, businesses that create a web site for the sole purpose of  advertising their own products or services cannot register a domain name used to identify that activity. In  examination, the issue usually arises when the applicant describes the activity as a registrable service, e.g.,  "providing information about [a particular field]," but the specimens of use make it clear that the web site merely  advertises the applicant’s own products or services. In this situation, the examining attorney must refuse  registration because the mark is used to identify an activity that does not constitute a "service" within the meaning 
of the Trademark Act. Trademark Act §§1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127.

C. Agreement of Mark on Drawing with Mark on Specimens of Use
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In a domain name mark (e.g., XYZ.COM or HTTP://WWW.XYZ.COM), consumers look to the second level  domain name for source identification, not to the TLD or the terms "http://www." or "www." Therefore, it is usually  acceptable to depict only the second level domain name on the drawing page, even if the specimens of use show a  mark that includes the TLD or the terms "http://www." or "www." Cf. Institut National des Appellations 
D’Origine v. Vintners Int’l Co., Inc., 954 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992) (CHABLIS WITH  A TWIST held to be registrable separately from CALIFORNIA CHABLIS WITH A TWIST); In re Raychem  Corporation, 12 USPQ2d 1399 (TTAB 1989) (refusal to register "TINEL-LOCK" based on specimens  showing "TRO6AI-TINEL-LOCK-RING" reversed). See also 37 C.F.R. §2.51(a)(1) and TMEP §807.14 et.  seq.

Example: The specimens of use show the mark HTTP://WWW.XYZ.COM. The applicant may 
elect to depict only the term "XYZ" on the drawing page.

Sometimes the specimens of use fail to show the entire mark sought to be registered (e.g., the drawing of the mark  is HTTP://WWW.XYZ.COM, but the specimens only show XYZ). If the drawing of the mark includes a TLD, or  the terms"http://www.," or "www.," the specimens of use must also show the mark used with those terms. 
Trademark Act §1(a)(1)(C), 15 U.S.C. §1051(a)(1)(C).

Example: If the drawing of the mark is XYZ.COM, specimens of use that only show the term XYZ 
are unacceptable.

D. Marks Comprised Solely of TLDs for Domain Name Registry Services
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If a mark is composed solely of a TLD for "domain name registry services" (e.g., the services currently provided  by Network Solutions, Inc. of registering .com domain names), registration should be refused under Trademark  Act §§1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127, on the ground that the TLD would not be  perceived as a mark. The examining attorney should include evidence from the NEXIS® database, the Internet, or  other sources to show that the proposed mark is currently used as a TLD or is under consideration as a new TLD.


If the TLD merely describes the subject or user of the domain space, registration should be refused under  Trademark Act §2(e)(1), 15 U.S.C. §2(e)(1), on the ground that the TLD is merely descriptive of the registry  services.

E. Intent-to-Use Applications
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A refusal of registration on the ground that the matter presented for registration does not function as a mark relates  to the manner in which the asserted mark is used. Therefore, generally, in an intent-to-use application, a mark that  includes a domain name will not be refused on this ground until the applicant has submitted specimens of use with  either an amendment to allege use under Trademark Act §1(c), or a statement of use under Trademark Act §1(d),  15 U.S.C. §1051(c) or (d). However, the examining attorney should include an advisory note in the first Office 
Action that registration may be refused if the proposed mark, as used on the specimens, identifies only an Internet  address. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided  to the applicant prior to the filing of the allegation of use, the Office is in no way precluded from refusing  registration on this basis.

III. Surnames
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If a mark is composed of a surname and a TLD, the examining attorney must refuse registration because the mark  is primarily merely a surname under Trademark Act §2(e)(4), 15 U.S.C. §1052(e)(4). A TLD has no trademark  significance. If the primary significance of a term is that of a surname, adding a TLD to the surname does not alter  the primary significance of the mark as a surname. Cf. In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 
265 (C.C.P.A. 1953) (S. SEIDENBERG & CO'S. held primarily merely a surname); In re Hamilton  Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993) (HAMILTON PHARMACEUTICALS for  pharmaceutical products held primarily merely a surname); In re Cazes, 21 USPQ2d 1796 (TTAB 1991)  (BRASSERIE LIPP held primarily merely a surname where "brasserie" is a generic term for applicant's restaurant 
services). See also TMEP §1211.01(b).

IV. Descriptiveness
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If a proposed mark is composed of a merely descriptive term(s) combined with a TLD, the examining attorney  should refuse registration under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), on the ground that the mark is  merely descriptive. This applies to trademarks, service marks, collective marks and certification marks.

Example: The mark is SOFT.COM for facial tissues. The examining attorney must
refuse registration under §2(e)(1).

Example: The mark is NATIONAL BOOK OUTLET.COM for retail book store
services. The examining attorney must refuse registration under §2(e)(1).

The TLD will be perceived as part of an Internet address, and does not add source identifying significance to the  composite mark. Cf. In re Page, 51 USPQ2d 1660 (TTAB 1999) (addition of a telephone prefix such as "800"  or "888" to a descriptive term is insufficient, by itself, to render the mark inherently distinctive); In re Patent & 
Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998) (PATENT & TRADEMARK SERVICES INC. is  merely descriptive of legal services in the field of intellectual property; the term "Inc." merely indicates the type of  entity that performs the services and has no significance as a mark); In re The Paint Products Co., 8 USPQ2d  1863 (TTAB 1988) (PAINT PRODUCTS CO. is no more registrable as a trademark for goods emanating from  a company that sells paint products than it would be as a service mark for retail paint store services offered by 
such a company); In re E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984) (OFFICE MOVERS, INC. incapable  of functioning as a mark for moving services; addition of the term "Inc." does not add any trademark significance to  matter sought to be registered). See also TMEP §1209.01(b)(12) regarding marks comprising in part "1-800,"  "888," or other telephone numbers.

V. Generic Refusals
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If a mark is composed of a generic term(s) for applicant’s goods or services and a TLD, the examining attorney  must refuse registration on the ground that the mark is generic and the TLD has no trademark significance. See

TMEP §1209.01(b)(12) regarding marks comprised in part of "1-800" or other telephone numbers. Marks  comprised of generic terms combined with TLDs are not eligible for registration on the Supplemental Register, or  on the Principal Register under Trademark Act §2(f), 15 U.S.C. §1052(f). This applies to trademarks, service marks, collective marks and certification marks.


Example: TURKEY.COM for frozen turkeys is unregistrable on either the
Principal or Supplemental Register.

Example: BANK.COM for banking services is unregistrable on either the
Principal or Supplemental Register.


The examining attorney generally should not issue a refusal in an application for registration on the Principal  Register on the ground that a mark is a generic name for the goods or services unless the applicant asserts that the 
mark has acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). Absent such a claim,  the examining attorney should issue a refusal on the ground that the mark is merely descriptive of the goods or  services under §2(e)(1), and provide an advisory statement that the matter sought to be registered appears to be a  generic name for the goods or services. TMEP §1209.02.

VI. Marks Containing Geographical Matter
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The examining attorney should examine marks containing geographic matter in the same manner that any mark  containing geographic matter is examined. See generally TMEP §§1210.05 and 1210.06. Depending on the  manner in which it is used on or in connection with the goods or services, a proposed domain name mark 
containing a geographic term may be primarily geographically descriptive under §2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2), or primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark Act,  15 U.S.C. §1052(e)(3), and/or merely descriptive or deceptively misdescriptive under §2(e)(1) of the Trademark  Act, 15 U.S.C. §1052(e)(1).

Geographic matter may be merely descriptive of services provided on the Internet

When a geographic term is used as a mark for services that are provided on the Internet, sometimes the  geographic term describes the subject of the service rather than the geographic origin of the service. Usually this  occurs when the mark is composed of a geographic term that describes the subject matter of information services 
(e.g., NEW ORLEANS.COM for "providing vacation planning information about New Orleans, Louisiana by  means of the global computer network"). In these cases, the examining attorney should refuse registration under  Trademark Act §2(e)(1) because the mark is merely descriptive of the services.

VII. Disclaimers
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Trademark Act §6(a), 15 U.S.C. §1056(a), provides for the disclaimer of "an unregistrable component" of a  mark. The guidelines on disclaimer set forth in TMEP §1213 et. seq. apply to domain name mark applications.

If a composite mark includes a domain name composed of unregistrable matter (e.g., a merely descriptive or  generic term and a TLD), disclaimer is required. See examples below and TMEP §§1213.03.

If a disclaimer is required and the domain name includes a misspelled or telescoped word, the correct spelling must  be disclaimed. See examples below and TMEP §§1213.04(a) and 1213.09(c).

A compound term composed of arbitrary or suggestive matter combined with a "dot" and a TLD is considered  unitary, and therefore no disclaimer of the TLD is required. See examples below and TMEP §1213.04(b).

Mark 
Disclaimer

XYZ BANK.COM BANK.COM
XYZ FEDERALBANK.COM FEDERAL BANK.COM
XYZ GROCERI STOR.COM GROCERY STORE.COM
XYZ.COM no disclaimer
XYZ.BANK.COM no disclaimer
XYZBANK.COM no disclaimer

VIII. Material Alteration
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Amendments may not be made to the drawing of the mark if the character of the mark is materially 
altered. Trademark Rule 2.72, 37 C.F.R §2.72. The test for determining whether an amendment is a material  alteration was articulated in Visa International Service Association v. Life-Code Systems, Inc., 220 USPQ 
740 (TTAB 1983):

The modified mark must contain what is the essence of the original mark, and the new form must 
create the impression of being essentially the same mark. The general test of whether an alteration is 
material is whether the mark would have to be republished after the alteration in order to fairly 
present the mark for purposes of opposition. If one mark is sufficiently different from another mark as  to require republication, it would be tantamount to a new mark appropriate for a new application.

Id. at 743-44.

Each case must be decided on its own facts. The controlling question is always whether the new and old form of  the marks create essentially the same commercial impression. TMEP §807.14(a).

Example: Amending the mark PETER, used on kitchen pots and pans, from PETER to PETER 
PAN would materially change the mark because adding the generic word PAN dramatically changes  the meaning of the mark – from a person’s name, to a well known storybook character’s name.

Adding or deleting TLDs in domain name marks

Generally, for domain name marks (e.g., COPPER.COM), the applicant may add or delete a TLD to the drawing  of the mark without materially altering the mark. A mark that includes a TLD will be perceived by the public as a  domain name, while a mark without a TLD will not. However, the public recognizes that a TLD is a  universally-used part of an Internet address. As a result, the essence of a domain name mark is created by the  second level domain name, not the TLD. The commercial impression created by the second level domain name  usually will remain the same whether the TLD is present or not.

Example: Amending a mark from PETER to PETER.COM would not materially change the mark because the  essence of both marks is still PETER, a person’s name.

Similarly, substituting one TLD for another in a domain name mark, or adding or deleting a "dot" or "http://www."  or "www." to a domain name mark is generally permitted.

Example: Amending a mark from XYZ.ORG to XYZ.COM would not materially change the mark 
because the essence of both marks is still XYZ.

Adding or deleting TLDs in other marks

If a TLD is not used as part of a domain name, adding or deleting a TLD may be a material alteration. When used  without a second level domain name, a TLD may have trademark significance. See TMEP §807.14(a).

Example: Deleting the term .COM from the mark .COM ? used on sports magazines would 
materially change the mark.

IX. Likelihood of Confusion
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In analyzing whether a domain name mark is likely to cause confusion with another pending or registered mark, the  examining attorney must consider the marks as a whole, but generally should accord little weight to the TLD  portion of the mark. See TMEP §1207.01(b) et. seq.

X. Marks Containing The Phonetic Equivalent of A Top Level Domain
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Marks containing the phonetic equivalent of a TLD (e.g., XYZ DOTCOM) are treated in the same manner as  marks composed of a regular TLD. If a disclaimer is necessary, the disclaimer must be in the form of the regular  TLD and not the phonetic equivalent. See TMEP §1213.09(c).

Example: The mark is INEXPENSIVE RESTAURANTS DOT COM for
providing information about restaurants by means of a global computer network.
Registration should be refused because the mark is merely descriptive of the
services under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1).

Example: The mark is XYZ DOTCOM. The applicant must disclaim the
TLD ".COM" rather than the phonetic equivalent "DOTCOM."

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Searching

Is it advisable to conduct a search before filing an application?
Yes, you need to conduct a search to see if there are any marks already registered that may conflict with the mark you wish to apply for.  Searches may be conducted on-line at
http://www.avanticorp.net/trademarks/faxorder.html/faxorder.html

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Where can I conduct a trademark search?

Searches may be conducted on-line at http://www.avanticorp.net/trademarks/faxorder.html/faxorder.html

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What are common law rights?

Federal registration is not required to establish rights in a trademark. 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 Trademark Office has the ultimate right to use and registration. 

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What is a common law search? How can I do one? Is doing a common law search necessary?

A common law search involves searching records other than the federal register and pending application records. It may involve checking phone directories, yellow pages, industrial directories, state trademark registers, among others, in an effort to determine if a particular mark is used by others when they have not filed for a federal trademark registration. A common law search is not necessary but some find it beneficial. Telephone numbers for search firms that perform these searches for a fee can be found in the yellow pages of local phone directories and through an Internet search.

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TRADEMARKS, PATENTS AND COPYRIGHTS

How do I find out if I need patent, trademark and/or copyright protection?

Patents protect inventions and improvements to existing inventions. Copyrights cover literary, artistic, and musical works. Trademarks are brand names and/or designs which are applied to products or used in connection with services.

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How do I register a copyright?

We offer copyright application services.
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Application Process

How do I obtain a federal trademark registration?

Proceed to the online secure order form located at http://www.avanticorp.net/trademarks/faxorder.html/faxorder.html
We will conduct a search and if the mark is able to be registered, we will proceed.

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Who may file an application?

Only the owner of the trademark 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.

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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 trademark. 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 Section 44 of the Trademark Act (for owners of foreign trademark applications and registrations), 15 U.S.C. §1126.

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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) and (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.

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If an applicant submits specimens, 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 ultimately, on the registration certificate itself. Specimens, on the other hand, are required as evidence that a mark is in actual use in commerce.

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Do I need an attorney to file my application?

No, although it may be desirable to employ someone who is familiar with trademark matters
such as Avanti Merchant Services.  If you or your company is not located within the United States of America, you will need to have a domestic representative. An applicant is responsible for observing and complying with all substantive and procedural issues and requirements whether or not represented by an attorney

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On what bases can a foreign applicant file an application for registration?

1.  Use in interstate commerce or commerce between the United States and a foreign   country.
2.  Bona fide or good faith intention to use the mark in interstate commerce or commerce between the United States and a foreign country.
3.  Ownership of an application filed in a foreign country (if within six months of the foreign filing date).
4.  Ownership of a foreign registration (with a certified copy).
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Can the Office refuse to register a mark?

Yes. The Office will refuse to register matter if it does not function as a trademark. 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.

Additionally, Section 2 of the Trademark Act (15 U.S.C. §1052) contains several of the most common (though not the only) grounds for refusing registration. The grounds for refusal under Section 2 may be summarized as:

1.  the proposed mark consists of or comprises immoral, deceptive, or scandalous matter;
2.  the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
3.  the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation;
4.  the proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the 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;
5.  the proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant's goods or services are likely to cause confusion, mistake, or deception;
6.  the proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services;
7.  the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services;
8.  the proposed mark is primarily merely a surname; and
9.  matter that, as a whole, is functional.
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Can I get a refund of monies paid to the Office?

Not usually. Only money paid by mistake or in excess (that is, paid when not required, or not required in the amount paid) may be refunded. A filing fee will be returned if submitted with a defective application which is denied a filing date. However, once the application receives a filing date, the filing fee will normally not be returned. All requests for refunds should be referred to the Finance Office, or the Examining Attorney assigned.

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How can I check on the status of a pending U.S. trademark application?

Once you receive a filing receipt containing the serial number of your application, you may send us an email at trademarks@avanticorp.net. We will check on the status and send you the results via email.

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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 will receive a filing receipt approximately six months after filing. The filing receipt will include the serial number of the application. All future correspondence with the office must include this serial number. You should receive a response from the Office within six to seven months from filing the application. However, the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.  Applicants should check on the status of their pending applications every six months.

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How long does a trademark registration last?

For a trademark 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.

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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.

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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.

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What are the different classes of goods and services?
 

GOODS

CLASS 1 (Chemicals)

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.
 

Explanatory Note

This class includes mainly chemical products used in industry, science and agriculture, including those which go to the making of products belonging to other classes.

Includes, in particular:

compost;

salt for preserving other than for foodstuffs.

Does not include, in particular:

raw natural resins (Cl. 02);

chemical products for use in medical science (Cl. 05);

fungicides, herbicides and preparations for destroying vermin (Cl. 05);

adhesives for stationery or household purposes (Cl. 16);

salt for preserving foodstuffs (Cl. 30);

straw mulch (Cl. 31).

CLASS 2 (Paints)

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.
 

Explanatory Note

This class includes mainly paints, colorants and preparations used for the protection against corrosion.

Includes, in particular:

paints, varnishes and lacquers for industry, handicrafts and arts;

dyestuffs for clothing;

colorants for foodstuffs and beverages.

Does not include, in particular:

unprocessed artificial resins (Cl. 01);

laundry bluing (Cl. 03);

cosmetic dyes (Cl. 03);

mordants for seed (Cl. 05);

paint boxes (articles for use in school) (Cl. 16);

insulating paints and varnishes (Cl. 17).

CLASS 3 (Cosmetics and cleaning preparations)

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
 

Explanatory Note

This class includes mainly cleaning preparations and toilet preparations.

Includes, in particular:

deodorants for personal use;

sanitary preparations being toiletries.

Does not include, in particular:

chemical chimney cleaners (Cl. 01);

degreasing preparations for use in manufacturing processes (Cl. 01);

deodorants other than for personal use (Cl. 05);

sharpening stones and grindstones (hand tools) (Cl. 08).

CLASS 4 (Lubricants and fuels)

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

Explanatory Note

This class includes mainly industrial oils and greases, fuels and illuminants.

Does not include, in particular:

certain special industrial oils and greases (consult the Alphabetical List of Goods).

CLASS 5 (Pharmaceuticals)

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.

Explanatory Note

This class includes mainly pharmaceuticals and other preparations for medical purposes.

Includes, in particular:

sanitary preparations for medical purposes and for personal hygiene;

deodorants other than for personal use;

cigarettes without tobacco, for medical purposes.

Does not include, in particular:

sanitary preparations being toiletries (Cl. 03);

deodorants for personal use (Cl. 03);

supportive bandages (Cl. 10).

CLASS 6 (Metal goods)

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

Explanatory Note

This class includes mainly unwrought and partly wrought common metals as well as simple products made of them.

Does not include, in particular:

bauxite (Cl. 01);

mercury, antimony, alkaline and alkaline-earth metals (Cl. 01);

metals in foil and powder form for painters, decorators, printers and artists (Cl. 02).

CLASS 7 (Machinery)

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.
 

Explanatory Note

This class includes mainly machines, machine tools, motors and engines.

Includes, in particular:

parts of motors and engines (of all kinds);

electric cleaning machines and apparatus.

Does not include, in particular:

certain special machines and machine tools (consult the Alphabetical List of Goods);

hand tools and implements, hand operated (Cl. 08);

motors and engines for land vehicles (Cl. 12).

CLASS 8 (Hand tools)

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

Explanatory Note

This class includes mainly hand operated implements used as tools in the respective professions.

Includes, in particular:

cutlery of precious metals;

electric razors and clippers (hand instruments).

Does not include, in particular:

certain special instruments (consult the Alphabetical List of Goods);

machine tools and implements driven by a motor (Cl. 07);

surgical cutlery (Cl. 10);

paperknives (Cl. 16);

fencing weapons (Cl. 28).

CLASS 9 (Electrical and scientific apparatus)

Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), lifesaving 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.

Explanatory Note

Includes, in particular:

apparatus and instruments for scientific research in laboratories;

apparatus and instruments for controlling ships, such as apparatus and instruments, for measuring and for transmitting orders;

the following electrical apparatus and instruments:
 

a. certain electrothermic tools and apparatus, such as electric soldering irons, electric flat irons which, if they were not electric, would belong to Class 8;
b. apparatus and devices which, if not electrical, would be listed in various classes, i.e., electrically heated clothing, cigar-lighters for automobiles;
protractors; punched card office machines; amusement apparatus adapted for use with television receivers only.

Does not include, in particular:

the following electrical apparatus and instruments:

a. electromechanical apparatus for the kitchen (grinders and mixers for foodstuffs, fruit-presses, electrical coffee mills, etc.), and certain other apparatus and instruments driven by an electrical motor, all coming under Class 7;
b. electric razors and clippers (hand instruments) (Cl. 08); electric toothbrushes and combs (Cl. 21);
c. electrical apparatus for space heating or for the heating of liquids, for cooking, ventilating, etc. (Cl. 11);
clocks and watches and other chronometric instruments (Cl. 14);

control clocks (Cl. 14).

CLASS 10 (Medical apparatus)

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

Explanatory Note

This class includes mainly medical apparatus, instruments and articles.

Includes, in particular:

special furniture for medical use;

hygienic rubber articles (consult the Alphabetical List of Goods);

supportive bandages.

CLASS 11 (Environmental control apparatus)

Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
 

Explanatory Note

Includes, in particular:

air conditioning apparatus;

bedwarmers, hot water bottles, warming pans, electric or non-electric;

electrically heated cushions (pads) and blankets, not for medical purposes;

electric kettles;

electric cooking utensils.

Does not include, in particular:

steam producing apparatus (parts of machines) (Cl. 07);

electrically heated clothing (Cl. 09).

CLASS 12 (Vehicles)

Vehicles; apparatus for locomotion by land, air or water.

Explanatory Note

Includes, in particular:

motors and engines for land vehicles;

couplings and transmission components for land vehicles;

air cushion vehicles.

Does not include, in particular:

certain parts of vehicles (consult the Alphabetical List of Goods);

railway material of metal (Cl. 06);

motors, engines, couplings and transmission components other than for land vehicles (Cl. 07);

parts of motors and engines (of all kinds) (Cl. 07).

CLASS 13 (Firearms)

Firearms; ammunition and projectiles; explosives; fireworks.

Explanatory Note

This class includes mainly firearms and pyrotechnical products.

Does not include, in particular:

matches (Cl. 34).

CLASS 14 (Jewelry)

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.

Explanatory Note

This class includes mainly precious metals, goods in precious metals and, in general, jewelry, clocks and watches.

Includes, in particular:

jewelry (i.e. imitation jewelry and jewelry of precious metal and stones);

cuff links, tie pins.

Does not include, in particular:

certain goods in precious metals (classified according to their function or purpose), for example:

metals in foil and powder form for painters, decorators, printers and artists (Cl. 02);

amalgam of gold for dentists (Cl. 05);

cutlery (Cl. 08);

electric contacts (Cl. 09);

pen nibs of gold (Cl. 16);

objects of art not in precious metals (classified according to the material of which they consist).

CLASS 15 (Musical Instruments)

Musical instruments.
 

Explanatory Note

Includes, in particular:

mechanical pianos and their accessories;

musical boxes;

electrical and electronic musical instruments.

Does not include, in particular:

apparatus for the recording, transmission, amplification and reproduction of sound (Cl. 09).

CLASS 16 (Paper goods and printed matter)

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

Explanatory Note

This class includes mainly paper, goods made from that material and office requisites.

Includes, in particular:

paper knives;

duplicators;

plastic sheets, sacks and bags for wrapping and packaging.

Does not include, in particular:

certain goods made of paper and cardboard (consult the Alphabetical List of Goods);

colors (Cl. 02);

hand tools for artists (for example: spatulas, sculptors' chisels) (Cl. 08).

CLASS 17 (Rubber goods)

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.
 

Explanatory Note

This class includes mainly electrical, thermal and acoustic insulating materials and plastics, being for use in manufacture in the form of sheets, blocks and rods.

Includes, in particular:

rubber material for recapping tires;

padding and stuffing materials of rubber or plastics;

floating anti-pollution barriers.

CLASS 18 (Leather goods)

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.
 

Explanatory Note

This class includes mainly leather, leather imitations, travel goods not included in other classes and saddlery.

Does not include, in particular:

clothing, footwear, headgear (consult the Alphabetical List of Goods).

CLASS 19 (Nonmetallic building materials)

Building materials (nonmetallic); nonmetallic rigid pipes for building; asphalt, pitch and bitumen; nonmetallic transportable buildings; monuments, not of metal.
 

Explanatory Note

This class includes mainly nonmetallic building materials.

Includes, in particular:

semi-worked woods (for example: beams, planks, panels);

veneers;

building glass (for example: floor slabs, glass tiles);

glass granules for marking out roads;

letter boxes of masonry.

Does not include, in particular:

cement preservatives and cement-waterproofing preparations (Cl. 01);

fireproofing preparations (Cl. 01).

CLASS 20 (Furniture and articles not otherwise classified)

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.

Explanatory Note

This class includes mainly furniture and its parts and plastic goods, not included in other classes.

Includes, in particular:

metal furniture and furniture for camping;

bedding (for example: mattresses, spring mattresses, pillows);

looking glasses and furnishing or toilet mirrors;

registration number plates not of metal;

letter boxes not of metal or masonry.

Does not include, in particular:

certain special types of mirrors, classified according to their function or purpose (consult the Alphabetical List of Goods);

special furniture for laboratories (Cl. 09);

special furniture for medical use (Cl. 10);

bedding linen (Cl. 24);

eiderdowns (Cl. 24).

CLASS 21 (Housewares and glass)

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; steel wool; un-worked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Explanatory Note

This class includes mainly small, hand-operated, utensils and apparatus for household and kitchen use as well as toilet utensils, glassware and articles in porcelain.

Includes, in particular:

utensils and containers for household and kitchen use, for example:

kitchen utensils, pails, and pans of iron, aluminum, plastics and other materials, small hand-operated apparatus for mincing, grinding, pressing, etc.;

candle extinguishers, not of precious metal;

electric combs;

electric toothbrushes;

dish stands and decanter stands.

Does not include, in particular:

certain goods made of glass, porcelain and earthenware (consult the Alphabetical List of Goods);

cleaning preparations, soaps, etc. (Cl. 03);

small apparatus for mincing, grinding, pressing, etc., driven by electricity (Cl. 07);

razors and shaving apparatus, clippers (hand instruments), metal implements and utensils for manicure and pedicure (Cl. 08);

cooking utensils, electric (Cl. 11);

toilet mirrors (Cl. 20).

CLASS 22 (Cordage and fibers)

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.

Explanatory Note

This class includes mainly rope and sail manufacture products, padding and stuffing materials and raw fibrous textile materials.

Includes, in particular:

cords and twines in natural or artificial textile fibres, paper or plastics.

Does not include, in particular:

certain nets, sacs and bags (consult the Alphabetical List of Goods);

strings for musical instruments (Cl. 15).

CLASS 23 (Yarns and threads)

Yarns and threads, for textile use.

CLASS 24 (Fabrics)

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

Explanatory Note

This class includes mainly textiles (piece goods) and textile covers for household use.

Includes, in particular:

bedding linen of paper.

Does not include, in particular:

certain special textiles (consult the Alphabetical List of Goods);

electrically heated blankets (Cl. 10);

table linen of paper (Cl. 16);

horse blankets (Cl. 18).

CLASS 25 (Clothing)

Clothing, footwear, headgear.

Explanatory Note

Does not include, in particular:

certain clothing and footwear for special use (consult the Alphabetical List of Goods).

CLASS 26 (Fancy goods)

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

Explanatory Note

This class includes mainly dressmakers' articles.

Includes, in particular:

slide fasteners.

Does not include, in particular:

certain special types of hooks (consult the Alphabetical List of Goods);

certain special types of needles (consult the Alphabetical List of Goods);

yarns and threads for textile use (Cl. 23).

CLASS 27 (Floor coverings)

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

Explanatory Note

This class includes mainly products intended to be added as furnishings to previously constructed floors and walls.

CLASS 28 (Toys and sporting goods)

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

Explanatory Note

Includes, in particular:

fishing tackle;

equipment for various sports and games.

Does not include, in particular:

Christmas tree candles (Cl. 04);

diving equipment (Cl. 09);

amusement apparatus adapted for use with television receivers only (Cl. 09);

electrical lamps (garlands) for Christmas trees (Cl. 11);

playing cards (Cl. 16);

fishing nets (Cl. 22);

clothing for gymnastics and sports (Cl. 25);

confectionery and chocolate decorations for Christmas trees (Cl. 30).

CLASS 29 (Meats and processed foods)

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.
 
 

Explanatory Note

This class includes mainly foodstuffs of animal origin as well as vegetables and other horticultural comestible products which are prepared for consumption or conservation.

Includes, in particular:

milk beverages (milk predominating).

Does not include, in particular:

certain foodstuffs of plant origin (consult the Alphabetical List of Goods);

baby food (Cl. 05);

dietetic substances adapted for medical use (Cl. 05);

salad dressings (Cl. 30);

fertilized eggs for hatching (Cl. 31);

foodstuffs for animals (Cl. 31);

living animals (Cl. 31).

CLASS 30 (Staple foods)

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.
 
 

Explanatory Note

This class includes mainly foodstuffs of plant origin prepared for consumption or conservation as well as auxiliaries intended for the improvement of the flavor of food.

Includes, in particular:

beverages with coffee, cocoa or chocolate base;

cereals prepared for human consumption (for example: oat flakes and those made of other cereals).

Does not include, in particular:

certain foodstuffs of plant origin (consult the Alphabetical List of Goods);

salt for preserving other than for foodstuffs (Cl. 01);

medicinal teas and dietetic substances adapted for medical use (Cl. 05);

baby food (Cl. 05);

raw cereals (Cl. 31);

foodstuffs for animals (Cl. 31).

CLASS 31 (Natural agricultural products)

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.
 
 

Explanatory Note

This class includes mainly land products not having been subjected to any form of preparation for consumption, living animals and plants as well as foodstuffs for animals.

Includes, in particular:

raw woods;

raw cereals;

fertilized eggs for hatching;

mollusca and crustacea (live).

Does not include, in particular:

cultures of micro-organisms and leeches for medical purposes (Cl. 05);

semi-worked woods (Cl. 19);

artificial fishing bait (Cl. 28);

rice (Cl. 30);

tobacco (Cl. 34).

CLASS 32 (Light beverages)

Beers; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
 
 

Explanatory Note

This class includes mainly nonalcoholic beverages, as well as beer.

Includes, in particular:

de-alcoholized drinks.

Does not include, in particular:

beverages for medical purposes (Cl. 05);

milk beverages (milk predominating) (Cl. 29);

beverages with coffee, cocoa or chocolate base (Cl. 30).

CLASS 33 (Wine and spirits)

Alcoholic beverages (except beers).
 
 

Explanatory Note

Does not include, in particular:

medicinal drinks (Cl. 05);

de-alcoholized drinks (Cl. 32).

CLASS 34 (Smokers' articles)

Tobacco; smokers' articles; matches.
 
 

Explanatory Note

Includes, in particular:

tobacco substitutes (not for medical purposes).

Does not include, in particular:

cigarettes without tobacco, for medical purposes (Cl. 05);

certain smokers' articles in precious metal (Cl. 14) (consult the Alphabetical List of Goods).
 
 
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SERVICES


CLASS 35 (Advertising and business)

Advertising; business management; business administration; office functions.
 
 

Explanatory Note

This class includes mainly services rendered by persons or organizations principally with the object of:

1. help in the working or management of a commercial undertaking, or

2. help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services.

Includes, in particular:

services consisting of the registration, transcription, composition, compilation, or systematization of written communications and registrations, and also the exploitation or compilation of mathematical or statistical data;

services of advertising agencies and services such as the distribution of prospectuses, directly or through the post, or the distribution of samples. This class may refer to advertising in connection with other services, such as those concerning bank loans or advertising by radio; the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.

Does not include, in particular:

activity of an enterprise the primary function of which is the sale of goods, i.e., of a so-called commercial enterprise;

services such as evaluations and reports of engineers which do not directly refer to the working or management of affairs in a commercial or industrial enterprise (consult the Alphabetical List of Services);

professional consultations and the drawing up of plans not connected with the conduct of business (Cl. 42).

CLASS 36 (Insurance and financial)

Insurance; financial affairs; monetary affairs; real estate affairs.
 
 

Explanatory Note

This class includes mainly services rendered in financial and monetary affairs and services rendered in relation to insurance contracts of all kinds.

Includes, in particular:

services relating to financial or monetary affairs comprise the following:

a. services of all the banking establishments, or institutions connected with them such as exchange brokers or clearing services;
b. services of credit institutions other than banks such as cooperative credit associations, individual financial companies, lenders, etc.;
c. services of "investment trusts," of holding companies;
d. services of brokers dealing in shares and property;
e. services connected with monetary affairs vouched for by trustees;
f. services rendered in connection with the issue of travelers' checks and letters of credit;
g. services of realty administrators of buildings, i.e., services of letting or valuation, or financing;
h. services dealing with insurance such as services rendered by agents or brokers engaged in insurance, services rendered to insured, and insurance underwriting services.


CLASS 37 (Building construction and repair)

Building construction; repair; installation services.
 
 

Explanatory Note

This class includes mainly services rendered by contractors or subcontractors in the construction or making of permanent buildings, as well as services rendered by persons or organizations engaged in the restoration of objects to their original condition or in their preservation without altering their physical or chemical properties.

Includes, in particular:

services relating to the construction of buildings, roads, bridges, dams or transmission lines and services of undertakings specializing in the field of construction such as those of painters, plumbers, heating installers or roofers;

services auxiliary to construction services like inspections of construction plans;

services of shipbuilding;

services consisting of hiring of tools or building materials;

repair services, i.e., services which undertake to put any object into good condition after wear, damage, deterioration or partial destruction (restoration of an existing building or another object that has become imperfect and is to be restored to its original condition);

various repair services such as those in the fields of electricity, furniture, instruments, tools, etc.;

services of maintenance for preserving an object in its original condition without changing any of its properties (for the difference between this class and Class 40 see the Explanatory Note of Class 40).

Does not include, in particular:

services consisting of storage of goods such as clothes or vehicles (Cl. 39);

services connected with dyeing of cloth or clothes (Cl. 40).

CLASS 38 (Telecommunications)
 
 

Explanatory Note

This class includes mainly services allowing at least one person to communicate with another by a sensory means. Such services include those which:

1. allow a person to talk to another,
2. transmit messages from one person to another, and
3. place a person in oral or visual communication with another (radio and television).
Includes, in particular:

services which consist essentially of the diffusion of radio or television programs.

Does not include, in particular:

radio advertising services (Cl. 35).

CLASS 39 (Transportation and storage)

Transport; packaging and storage of goods; travel arrangement.
 
 

Explanatory Note


This class includes mainly services rendered in transporting people or goods from one place to another (by rail, road, water, air or pipeline) and services necessarily connected with such transport, as well as services relating to the storing of goods in a warehouse or other building for their preservation or guarding.

Includes, in particular:

services rendered by companies exploiting stations, bridges, rail-road ferries, etc., used by the transporter;

services connected with the hiring of transport vehicles;

services connected with maritime tugs, unloading, the functioning of ports and docks and the salvaging of wrecked ships and their cargoes;

services connected with the functioning of airports;

services connected with the packaging and parceling of goods before dispatch;

services consisting of information about journeys or the transport of goods by brokers and tourist agencies, information relating to tariffs, timetables and methods of transport;

services relating to the inspection of vehicles or goods before transport.

Does not include, in particular:

services relating to advertising transport undertakings such as the distribution of prospectuses or advertising on the radio (Cl. 35);

services relating to the issuing of travelers' checks or letters of credit by brokers or travel agents (Cl. 36);

services relating to insurance (commercial, fire or life) during the transport of persons or goods (Cl. 36);

services rendered by the maintenance and repair of vehicles, nor the maintenance or repair of objects connected with the transport of persons or goods (Cl. 37);

services relating to reservation of rooms in a hotel by travel agents or brokers (Cl. 42).

CLASS 40 (Treatment of materials)

Treatment of materials.
 
 

Explanatory Note

This class includes mainly services not included in other classes, rendered by the mechanical or chemical processing or transformation of objects or inorganic or organic substances.

For the purposes of classification, the mark is considered a service mark only in cases where processing or transformation is effected for the account of another person. A mark is considered a trade mark in all cases where the

substance or object is marketed by the person who processed or transformed it.

Includes, in particular:

services relating to transformation of an object or substance and any process involving a change in its essential properties (for example, dyeing a garment); consequently, a maintenance service, although usually in Class 37, is included in Class 40 if it entails such a change (for example, the chroming of motor vehicle bumpers);

services of material treatment which may be present during the production of any substance or object other than a building; for example, services which involve cutting, shaping, polishing by abrasion or metal coating.

Does not include, in particular:

repair services (Cl. 37).

CLASS 41 (Education and entertainment)

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

Explanatory Note

This class contains mainly services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as services intended to entertain or to engage the attention.

Includes, in particular:

services consisting of all forms of education of persons or training of animals;

services having the basic aim of the entertainment, amusement or

recreation of people.

CLASS 42 (Miscellaneous)

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.
 
 

Explanatory Note

This class contains all services which could not be placed in other classes.

Includes, in particular:

services rendered in procuring lodgings, rooms and meals, by hotels, boarding houses, tourist camps, tourist houses, dude ranches, sanatoria, rest homes and convalescence homes;

services rendered by establishments essentially engaged in procuring food or drink prepared for consumption; such services can be rendered by restaurants, self-service restaurants, canteens, etc.;

personal services rendered by establishments to meet individual needs; such services may include social escorts, beauty salons, hairdressing salons, funeral establishments or crematoria;

services rendered by persons, individually or collectively, as a member of an organization, requiring a high degree of mental activity and relating to theoretical or practical aspects of complex branches of human effort; the services rendered by these persons demand of them a deep and extensive university education or equivalent experience; such services rendered by representatives of professions such as engineers, chemists, physicists, etc., are included in this class;

services of travel agents or brokers ensuring hotel accommodation for travelers;

services of engineers engaged in valuing, estimates, research and reports;

services (not included in other classes) rendered by associations to their own members.

Does not include, in particular:

professional services giving direct aid in the operations or functions of a commercial undertaking (Cl. 35);

services for travelers rendered by travel agencies (Cl. 39);

performances of singers or dancers in orchestras or operas (Cl. 41).

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OTHER

How do I contest someone else using a trademark similar to mine?

There are several ways to dispute use of your trademark by a third party. Depending on the factual situation, the Trademark Office may or may not be the proper forum. You should consider contacting an attorney, preferably one specializing in trademark law. Local bar associations and the yellow pages usually have attorney listings broken down by specialties. Time can be of the essence. 

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Is the name of a band a trademark?

Yes, band names would be considered trademarks, or more appropriately service marks, for entertainment services in the nature of performances by a [type of music specified] band.

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Can a minor file a trademark application?

This depends upon state law. If the person can validly enter into binding legal obligations in the state, then that person may sign a trademark application. Otherwise, a parent or legal guardian must sign the application, clearly setting forth their status as a parent or legal guardian of the applicant.

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Can the ownership of a trademark be assigned or transferred from one person to another?

Yes. A registered mark, or a mark for which an application to register has been filed is assignable. Written assignments may be recorded in the office for a fee. 

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My spouse owned a trademark registration and has since died. Do I own it now?

Perhaps. Because this depends on state law, the office cannot provide a definite answer for all factual situations. You should consider contacting an attorney, preferably one specializing in trademark law. Local bar associations and the yellow pages usually have attorney listings broken down by specialties.

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Avanti Merchant Services
2625 North Mulford #134
Rockford, IL 61114
avanticorp.net
815.642-9257

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