As stated in section 1202.02(a)(vi) Aesthetic Functionalityof the Trademark Manual of Examination Procedure:

"Aesthetic functionality" refers to situations where the feature may not provide a truly utilitarian advantage in terms of product performance, but provides other competitive advantages. For example, in Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995), the Federal Circuit affirmed the Board's determination that the color black for outboard motors was functional because, while it had no utilitarian effect on the mechanical working of the engines, it nevertheless provided other identifiable competitive advantages – i.e., ease of coordination with a variety of boat colors and reduction in the apparent size of the engines.

The concept of "aesthetic functionality" (as opposed to "utilitarian functionality") has for many years been the subject of much confusion. While the Court of Customs and Patent Appeals (the predecessor to the Court of Appeals for the Federal Circuit) appeared to reject the doctrine of aesthetic functionality in In re DC Comics, Inc., 689 F.2d 1042, 1047-1050, 215 USPQ 394 (C.C.P.A. 1982), the Supreme Court later referred to aesthetic functionality as a valid legal concept in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001). The confusion regarding aesthetic functionality stems in part from widespread misuse of the term "aesthetic functionality" in cases involving ornamentation issues, with some courts having mistakenly expanded the category of "functional" marks to include matter that is solely ornamental, essentially on the theory that such matter serves an "aesthetic function" or "ornamentation function." It is this incorrect use of the term "aesthetic functionality" in connection with ornamentation cases that was rejected by the Court of Customs and Patent Appeals. See In re DC Comics, Inc., 689 F.2d 1042, 215 USPQ 394, 397, 399-401 (C.C.P.A. 1982) (majority opinion and Rich, J., concurring) (holding, in a case involving features of toy dolls, that the Board had improperly "intermingled the concepts of utilitarian functionality and what has been termed ‘aesthetic functionality;'" and rejecting the concept of aesthetic functionality where it is used as a substitute for "the more traditional source identification principles of trademark law," such as the ornamentation and functionality doctrines).

Where the issue presented is whether the proposed mark is ornamental in nature, it is improper to refer to "aesthetic functionality," because the doctrine of "functionality" is inapplicable to such cases. The proper refusal is that the matter is ornamental and thus does not function as a mark under §§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127. See TMEP §§1202.03 et seq. regarding ornamentation.

The Supreme Court's use of the term "aesthetic functionality" in the TrafFix case appears limited to cases where the issue is one of actual functionality, but where the nature of the proposed mark makes it difficult to evaluate the functionality issue from a purely utilitarian standpoint. This is the case with color marks and product features that enhance the attractiveness of the product. The color or feature does not normally give the product a truly utilitarian advantage (in terms of making the product actually perform better), but may still be found to be functional because it provides other real and significant competitive advantages and thus should remain in the public domain. See Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-1164 (1995) (stating that a product color might be considered functional if its exclusive use "would put competitors at a significant non-reputation-related disadvantage," even where the color was not functional in the utilitarian sense).

In M-5 Steel Mfg., Inc. v. O'Hagin's Inc., 61 USPQ2d 1086 (TTAB 2001), the Board considered the proper use of the aesthetic functionality doctrine in connection with product designs for metal ventilating ducts and vents for tile or concrete roofs:

This case seems to involve elements of both utilitarian and aesthetic functionality. Here, for example, there is evidence of utility in applicant's patent application, as well as statements touting the superiority of applicant's design in applicant's promotional literature, and statements that applicant's design results in reduced costs of installation. On the other hand, there is no question that applicant's roof designs which match the appearance of surrounding roof tiles are more pleasing in appearance because the venting tiles in each case are unobtrusive.

M-5 Steel, 61 USPQ2d at 1096. Citing extensively from the TrafFix, Qualitex and Brunswick cases, the Board concluded that the product designs were functional for a combination of utilitarian and aesthetic reasons. M-5 Steel, 61 USPQ2d at 1097.

Note that this type of functionality determination – while employed in connection with a normally "aesthetic" feature such as color – is a proper use of the functionality doctrine, necessitating a §2(e)(5) refusal where the evidence establishes that a color or other matter at issue provides identifiable competitive advantages and thus should remain in the public domain. This is the opposite of an ornamentation refusal, where the matter at issue serves no identifiable purpose other than that of pure decoration.

Generally speaking, examining attorneys should exercise caution in the use of the term "aesthetic functionality," in light of the confusion that historically has surrounded this issue. In most situations, reference to aesthetic functionality will be unnecessary, since a determination that the matter sought to be registered is purely ornamental in nature will result in an ornamentation refusal under §§1, 2 and 45, and a determination that the matter sought to be registered is functional will result in a functionality refusal under §2(e)(5). Use of the term "aesthetic functionality" may be appropriate in limited circumstances where the proposed mark presents issues similar to those involved in the M-5 Steel and Brunswick cases, supra – i.e., where the issue is one of true functionality under §2(e)(5), but where the nature of the mark makes the functionality determination turn on evidence of particular competitive advantages that are not necessarily categorized as "utilitarian" in nature. Any such use of the term "aesthetic functionality" should be closely tied to a discussion of specific competitive advantages resulting from use of the proposed mark at issue, so that it is clear that the refusal is properly based on the functionality doctrine and not on an incorrect use of "aesthetic functionality" to mean ornamentation.

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  • The owner of a "popular" trademark has the right to prevent others from marketing items using a confusingly similar mark.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007).
      • We cannot conclude that applicant has any right to register its mark simply because it attempts to market its goods to a fan who wants "to communicate his allegiance and support of his team." The trademark owner has a right to market its promotional items to those fans and to prevent others from marketing promotional items to the same fans by using a confusingly similar mark.
  • The mere fact that a trademark owner's mark is associated with a movie, television show, university, or sports team does not mean that it is functional and available for others to use to promote their goods when the trademark owner is actively licensing the mark for related items.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007).
      • The mere fact that a trademark owner's mark is associated with a movie, television show, university, or sports team does not mean that it is functional and available for others to use to promote their goods when the trademark owner is actively licensing the mark for related items. See In re Paramount Pictures Corporation, 217 USPQ 292, 293 (TTAB 1983) ("In the case before us, we have a mark well known as the name of a television show and a movie. In view of applicant's registration of ‘STAR TREK' for a number of other goods, it is clear that it performs a trademark function and is recognizable as such to the extent that the public would associate articles on which it appears as having a common origin").8

        FOOTNOTE 8 "We add that the case of American Footwear Corp. v. General Footwear Co., 609 F.2d 655, 204 USPQ 609, 616 (2d Cir. 1979), is distinguishable because the "trademarks registered to Universal [relating to the Six Million Dollar Man and The Bionic Woman television shows] were in the areas of T.V. entertainment and toys. This market area bears little if any relationship to footwear, and diminishes the strength of Universal's contention that it had established a right to the term ‘bionic' as a fanciful mark in the field of footwear." In the present case, opposers have shown that the goods of the parties are not only related, but in some cases, identical, and that opposers have priority of use for these items, unlike the party in American Footwear. Id."

  • Public's desire to purchase goods for the sake of a popular trademark does not preclude registration of the mark.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007).
      • In light of the above, and assuming for the sake of argument that aesthetic functionality is a valid basis for opposing registration, we concur with applicant that the marks at issue are not aesthetically functional as used in connection with clothing. While, especially in the case of apparel imprinted with designs featuring "Bucky Badger," it is undisputed that many purchasers buy such garments because they find "Bucky" to be "cute" or otherwise appealing and do not care about the particular quality of the goods or whether the University sponsors or endorses them, these facts are legally immaterial. That is to say, the fact that consumers buy a T-shirt, sweatshirt or other garment because they like and want the particular "Bucky Badger," "Bucky on W" or "WISCONSIN BADGERS" design imprinted thereon does not render such designs aesthetically functional. Taken to its logical conclusion, opposers' argument would eliminate trademark protection and registrability for any popular and commercially successful design which is imprinted on clothing, irrespective of whether the design additionally is source-indicative to at least some consumers. University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1406 (TTAB 1994)(footnote omitted).
  • Case Finding: Case law does not recognize a right to register similar marks to show support or hostility to a cause.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007).
      • Also, we reject applicant's argument because it apparently would allow others to register marks that are similar to registered marks in order to show support or hostility to a sports team. American case law simply does not recognize such a right.
  • Case Finding: Abandonment of a mark confusingly similar to the new mark does not entitle another to use the abandoned mark to confuse the public.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007).
      • For example, despite the finding of the abandonment of the Baltimore Colts mark and the resulting anger of local fans when the team moved to Indianapolis, another team was not permitted to use the mark BALTIMORE CFL COLTS. See, e.g., Indianapolis Colts, 31 USPQ2d at 1814 ("The Colts' abandonment of a mark confusingly similar to their new mark neither broke the continuity of the team in its different locations -- it was the same team, merely having a different home base and therefore a different geographical component in its name -- nor entitled a third party to pick it up and use it to confuse Colts fans").
  • Case Finding: Degree of merchandising of a mark can lead to a finding that the mark is a functional aesthetic component and not a mark.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007).
      • Second, this case is not similar to International Order of Job's Daughters on which applicant relies. In that case: "The TTAB gave preclusive effect to the Ninth Circuit's determination that the Job's Daughters name and emblem were merely "functional aesthetic components of the product, not trademarks," primarily as a result of the widespread merchandising of Job's Daughters jewelry by many American retail jewelers (including Lindeburg) who are independent of Job's Daughters." International Order of Job's Daughters v. Lindeburg and Company, 727 F.2d 1087, 220 USPQ 1017, 1018-19 (Fed. Cir. 1984), discussing International Order of Job's Daughters v. Lindeburg and Company, 633 F.2d 912, 208 USPQ 718 (9th Cir. 1980), cert. denied, 452 U.S. 941 (1981). Here, applicant has not shown that there has been widespread merchandising of the BEARS club marks by independent entities.
Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)Grand Total
Indianapolis Colts Inc. v. Metropolitan Baltimore Football Club Ltd. Partnership, 34 F.3d 410, 31 USPQ2d 1811 (7th Cir. 1994) 1
University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994) 1
International Order of Job's Daughters v. Lindeburg and Company, 727 F.2d 1087, 220 USPQ 1017 (Fed. Cir. 1984) 1
In re Paramount Pictures Corporation, 217 USPQ 292 (TTAB 1983) 1
International Order of Job's Daughters v. Lindeburg and Company, 633 F.2d 912, 208 USPQ 718 (9th Cir. 1980), cert. denied, 452 U.S. 941 (1981) 1
American Footwear Corp. v. General Footwear Co., 609 F.2d 655, 204 USPQ 609 (2d Cir. 1979) 1
Cosmetically Yours Inc. v. Clairol Inc., 424 F.2d 1385, 165 USPQ 515 (CCPA 1970) 1
Contour Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139 USPQ 285 (CCPA 1963) 1
Grand Total88

Sec. 1051. Application for registration; verification

  1. (a) Application for use of trademark
    1. (1) The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director, and such number of specimens or facsimiles of the mark as used as may be required by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the date of the applicant's first use of the mark, the date of the applicant's first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify that--
      1. (A) the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be the owner of the mark sought to be registered;
      2. (B) to the best of the verifier's knowledge and belief, the facts recited in the application are accurate;
      3. (C) the mark is in use in commerce; and
      4. (D) to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive, except that, in the case of every application claiming concurrent use, the applicant shall--
        1. (i) state exceptions to the claim of exclusive use; and
        2. (ii) shall \\1\\ specify, to the extent of the verifier's knowledge--
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          \\1\\ So in original. The word ``shall'' probably should not appear.
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          1. (I) any concurrent use by others;
          2. (II) the goods on or in connection with which and the areas in which each concurrent use exists;
          3. (III) the periods of each use; and
          4. (IV) the goods and area for which the applicant desires registration.
  2. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  3. (b) Application for bona fide intention to use trademark
    1. (1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to use the mark, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify--
      1. (A) that the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be entitled to use the mark in commerce;
      2. (B) the applicant's bona fide intention to use the mark in commerce;
      3. (C) that, to the best of the verifier's knowledge and belief, the facts recited in the application are accurate; and
      4. (D) that, to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive.
    Except for applications filed pursuant to section 1126 of this title, no mark shall be registered until the applicant has met the requirements of subsections (c) and (d) of this section.
    1. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  4. (c) Amendment of application under subsection (b) to conform to requirements of subsection (a) At any time during examination of an application filed under subsection (b) of this section, an applicant who has made use of the mark in commerce may claim the benefits of such use for purposes of this chapter, by amending his or her application to bring it into conformity with the requirements of subsection (a) of this section.
  5. (d) Verified statement that trademark is used in commerce
    1. (1) Within six months after the date on which the notice of allowance with respect to a mark is issued under section 1063(b)(2) of this title to an applicant under subsection (b) of this section, the applicant shall file in the Patent and Trademark Office, together with such number of specimens or facsimiles of the mark as used in commerce as may be required by the Director and payment of the prescribed fee, a verified statement that the mark is in use in commerce and specifying the date of the applicant's first use of the mark in commerce and those goods or services specified in the notice of allowance on or in connection with which the mark is used in commerce. Subject to examination and acceptance of the statement of use, the mark shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued for those goods or services recited in the statement of use for which the mark is entitled to registration, and notice of registration shall be published in the Official Gazette of the Patent and Trademark Office. Such examination may include an examination of the factors set forth in subsections (a) through (e) of section 1052 of this title. The notice of registration shall specify the goods or services for which the mark is registered.
    2. (2) The Director shall extend, for one additional 6-month period, the time for filing the statement of use under paragraph (1), upon written request of the applicant before the expiration of the 6-month period provided in paragraph (1). In addition to an extension under the preceding sentence, the Director may, upon a showing of good cause by the applicant, further extend the time for filing the statement of use under paragraph (1) for periods aggregating not more than 24 months, pursuant to written request of the applicant made before the expiration of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied by a verified statement that the applicant has a continued bona fide intention to use the mark in commerce and specifying those goods or services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. Any request for an extension under this paragraph shall be accompanied by payment of the prescribed fee. The Director shall issue regulations setting forth guidelines for determining what constitutes good cause for purposes of this paragraph.
    3. (3) The Director shall notify any applicant who files a statement of use of the acceptance or refusal thereof and, if the statement of use is refused, the reasons for the refusal. An applicant may amend the statement of use.
    4. (4) The failure to timely file a verified statement of use under paragraph (1) or an extension request under paragraph (2) shall result in abandonment of the application, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the time for filing may be extended, but for a period not to exceed the period specified in paragraphs (1) and (2) for filing a statement of use.
  6. (e) Designation of resident for service of process and notices
    If the applicant is not domiciled in the United States the applicant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.

 

 

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) 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, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his 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.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.

 

 

Sec. 1127. Construction and definitions; intent of chapter

In the construction of this chapter, unless the contrary is plainly apparent from the context--
The United States includes and embraces all territory which is under its jurisdiction and control.
The word ``commerce'' means all commerce which may lawfully be regulated by Congress.
The term ``principal register'' refers to the register provided for by sections 1051 to 1072 of this title, and the term ``supplemental register'' refers to the register provided for by sections 1091 to 1096 of this title.
The term ``person'' and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this chapter includes a juristic person as well as a natural person. The term ``juristic person'' includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
The term ``person'' also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The term ``person'' also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The terms ``applicant'' and ``registrant'' embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.
The term ``Director'' means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The term ``related company'' means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
The terms ``trade name'' and ``commercial name'' mean any name used by a person to identify his or her business or vocation. The term ``trademark'' includes any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
The term ``service mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
The term ``certification mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person other than its owner, or
    2. (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter,
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person'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.
The term ``collective mark'' means a trademark or service mark--
    1. (1) used by the members of a cooperative, an association, or other collective group or organization, or
    2. (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
and includes marks indicating membership in a union, an association, or other organization.
The term ``mark'' includes any trademark, service mark, collective mark, or certification mark.
The term ``use in commerce'' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce--
    1. (1) on goods when--
      1. (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
      2. (B) the goods are sold or transported in commerce, and
    2. (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
A mark shall be deemed to be ``abandoned'' if either of the following occurs:
    1. (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. ``Use'' of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
    2. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
The term ``colorable imitation'' includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.
The term ``registered mark'' means a mark registered in the United States Patent and Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, or the Act of March 19, 1920. The phrase ``marks registered in the Patent and Trademark Office'' means registered marks.
The term ``Act of March 3, 1881'', ``Act of February 20, 1905'', or ``Act of March 19, 1920'', means the respective Act as amended.
A ``counterfeit'' is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.
The term ``domain name'' means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.
The term ``Internet'' has the meaning given that term in section 230(f)(1) of title 47.
Words used in the singular include the plural and vice versa.
The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.