As stated in section 1202.01 Refusal of Matter Used Solely as a Trade Name of the Trademark Manual of Examination Procedure:

The name of a business or company is a trade name. The Trademark Act distinguishes trade names from trademarks by definition. While a trademark is used to identify and distinguish the trademark owner's goods from those manufactured or sold by others and to indicate the source of the goods, "trade name" and "commercial name" are defined in §45 of the Act, 15 U.S.C. §1127, as follows:

The terms "trade name" and "commercial name" mean any name used by a person to identify his or her business or vocation.

The Trademark Act does not provide for registration of trade names. See In re Letica Corp., 226 USPQ 276, 277 (TTAB 1985) ("[T]here was a clear intention by the Congress to draw a line between indicia which perform only trade name functions and indicia which perform or also perform the function of trademarks or service marks.").

If the examining attorney determines that matter for which registration is requested is merely a trade name, registration must be refused both on the Principal Register and on the Supplemental Register. The statutory basis for refusal of trademark registration on the ground that the matter is used merely as a trade name is §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, and, in the case of matter sought to be registered for services, §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127.

A designation may function as both a trade name and a trademark or service mark. See In re Walker Process Equipment Inc., 233 F.2d 329, 332, 110 USPQ 41, 43 (C.C.P.A. 1956), aff'g 102 USPQ 443 (Comm'r Pats. 1954).

If subject matter presented for registration in an application is a trade name or part of a trade name, the examining attorney must determine whether it is also used as a trademark or service mark, by examining the specimen and other evidence of record in the application file. See In re Diamond Hill Farms, 32 USPQ2d 1383 (TTAB 1994) (DIAMOND HILL FARMS, as used on containers for goods, found to be a trade name that identifies applicant as a business entity rather than a mark that identifies applicant's goods and distinguishes them from those of others).

Whether matter that is a trade name (or a portion thereof) also performs the function of a trademark depends on the manner of its use and the probable impact of the use on customers. See In re Supply Guys, Inc., 86 USPQ2d 1488 (TTAB 2008) (use of trade name in "Ship From" section of Federal Express label where it serves as a return address does not demonstrate trademark use as the term appears where customers would look for the name of the party shipping the package); In re Unclaimed Salvage & Freight Co., Inc., 192 USPQ 165, 168 (TTAB 1976) ("It is our opinion that the foregoing material reflects use by applicant of the notation ‘UNCLAIMED SALVAGE & FREIGHT CO.' merely as a commercial, business, or trade name serving to identify applicant as a viable business entity; and that this is or would be the general and likely impact of such use upon the average person encountering this material under normal circumstances and conditions surrounding the distribution thereof."); In re Lytle Engineering & Mfg. Co., 125 USPQ 308 (TTAB 1960) ("‘LYTLE' is applied to the container for applicant's goods in a style of lettering distinctly different from the other portion of the trade name and is of such nature and prominence that it creates a separate and independent impression.")

The presence of an entity designator in a name sought to be registered and the proximity of an address are both factors to be considered in determining whether a proposed mark is merely a trade name. In re Univar Corp., 20 USPQ2d 1865, 1869 (TTAB 1991) ("[T]he mark "UNIVAR" independently projects a separate commercial impression, due to its presentation in a distinctively bolder, larger and different type of lettering and, in some instances, its additional use in a contrasting color, and thus does more than merely convey information about a corporate relationship.") See also Book Craft, Inc. v. BookCrafters USA, Inc., 222 USPQ 724, 727 (TTAB 1984) ("That the invoices ... plainly show ... service mark use is apparent from the fact that, not only do the words ‘BookCrafters, Inc.' appear in larger letters and a different style of print than the address, but they are accompanied by a design feature (the circularly enclosed ends of two books).").

A determination of whether matter serves solely as a trade name rather than as a mark requires consideration of the way the mark is used, as evidenced by the specimen. Therefore, no refusal on that ground will be issued in an intent-to-use application until the applicant has submitted specimen(s) of use in conjunction with an allegation of use under 15 U.S.C. §1051(c) or 15 U.S.C. §1051(d)).

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  • A trade name lacking any independent trademark or service mark significance may bar registration of a mark that is confusingly similar to that trade name.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • Certainly, "a trade name lacking any independent trademark or service mark significance may bar registration of a trademark or service mark that is confusingly similar to that trade name." Martahus, 27 USPQ2d at 1850.
  • Use of a trade name on order forms, invoices, package inserts, leaflets, brochures or other advertising material such as information sheets does not constitute use thereof as a trademark.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • FOOTNOTE 20 "We add that even if a business card was occasionally included with the final product, the "use of a term on order forms or invoices or package inserts or leaflets or brochures or other advertising material such as information sheets does not constitute use thereof as a trademark." In re Bright of America, Inc., 205 USPQ 63, 71 (TTAB 1979)"
  • A "service mark" is used by a person 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. A trademark or service mark includes any word, name, symbol, or device, and any combination thereof and, of course, it includes trademarks or service marks for which a person has a bona fide intention to use the mark in commerce.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • A "service mark" is used by a person "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." Id.5 FOOTNOTE 5 "For the sake of completeness, we add that a trademark or service mark includes "any word, name, symbol, or device, and any combination thereof" and, of course, it includes trademarks or service marks for which a person has a bona fide intention to use the mark in commerce. 15 U.S.C. § 1127."
  • A "trademark" is used by a person 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.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • A "trademark" is used by a person "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." 15 U.S.C. § 1127.
  • A distributor may use its own trademark on the goods that it distributes.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • The case certainly confirms that a distributor may use its own trademark on the goods that it distributes. In re Los Angeles Police Revolver and Athletic Club Inc., 69 USPQ2d 1630, 1634 (TTAB 2003) ("[T]he mere fact that applicant is the distributor of goods is not necessarily fatal to its claim of ownership of the mark").
  • A domain name does not become a trademark unless it is also used to identify and distinguish the source of goods or services.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • "Like a street address or telephone number, every domain name serves the purely technological function of locating a Web site in cyberspace. However, a domain name does not become a trademark or service mark unless it is also used to identify and distinguish the source of goods or services. Out of the millions of domain names, probably only a small percentage also play the role of a trademark or service mark." McCarthy on Trademarks and Unfair Competition, § 7.17.1 (2007) (footnotes omitted).
  • A mark may serve both as a trademark and service mark or a trade name.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • A mark may serve both as a trademark and service mark (or a trade name).
  • A product may contain more than one trademark, including a trademark of the distributor as well as the manufacturer. The principle can be extended one step further to allow the inclusion on the product of the distributor's trademark and trade name along with the manufacturer's trademark so long as the effect thereof upon customers and prospective customers is not to confuse them as to the source of the goods or to obliterate the distinction between the distributor and the manufacturer which is necessary to give validity and vitality to this concept
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • Furthermore, it is not disputed that a product may contain more than one trademark, including a trademark of the distributor as well as the manufacturer. Safe-T Pacific Company v. Nabisco, Inc., 204 USPQ 307, 315 (TTAB 1979 ("The principle can be extended one step further to allow the inclusion on the product of the distributor's trademark and trade name along with the manufacturer's trademark so long as the effect thereof upon customers and prospective customers is not to confuse them as to the source of the goods or to obliterate the distinction between the distributor and the manufacturer which is necessary to give validity and vitality to this concept").
  • A retailer that sells the goods of others does not necessarily have a trademark for those goods.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • A retailer that sells the goods of others does not necessarily have a trademark for those goods. Applicant relies on the case of Power Test Petroleum Distributors, Inc. v. Calcu Gas, Inc., 754 F.2d 91, 225 USPQ 368 (2d Cir. 1985).
  • A trademark owner may affix his trademark to a product manufactured for him, or that the product need not be one he manufactures.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • Unlike this ex parte trademark appeal, that case involved a preliminary injunction in an antitrust case where the defendant alleged that the trademark it licensed was an illegal tying arrangement. The Court pointed out that the "manufacturer-purchaser distinction is not controlling… This says that a trademark owner may affix his trademark to a product manufactured for him, or that the product need not be one he manufactures." 225 USPQ at 373. More specifically, Power Test involved a distributor who purchased gasoline from various sources and petroleumrelated products and distributed them to its franchised service stations with its trademark.
  • A website that displays a product, and provides a means of ordering the product, can constitute a display associated with the goods, as long as the mark appears on the web page in a manner in which the mark is associated with the goods, and the web page provides a means for ordering the goods.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • "The TMEP also addresses the question of whether electronic displays function as a trademark: ""A website page that displays a product, and provides a means of ordering the product, can constitute a "display associated with the goods," as long as the mark appears on the web page in a manner in which the mark is associated with the goods, and the web page provides a means for ordering the goods. The Trademark Trial and Appeal Board has held that web pages that display goods and their trademarks and provide for online ordering of such goods are, in fact, electronic displays which are associated with the goods. Such uses are not merely advertising, because in addition to showing the goods, they provide a link for ordering the goods. In effect, the website is an electronic retail store, and the web page is a shelf-talker or banner which encourages the consumer to buy the product. A consumer using the link on the web page to purchase the goods is the equivalent of a consumer seeing a shelf-talker and taking the item to the cashier in a store to purchase it. The web page is thus a point of sale display by which an actual sale is made. In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004)…

        The mark must also be displayed on the webpage in a manner in which customers will easily recognize it is a mark. In re Morganroth, 208 USPQ 284 (TTAB 1980). In [In re Osterberg, 84 USPQ2d 1220 (TTAB 2007)], the Board found that CONDOMTOY CONDOM was not displayed so prominently that consumers would recognize it as a trademark for condoms."" TMEP § 904.03(i)."

  • Although applicant attempts to rely on the theory of "secondary source," there is no factual parallel herein to reported decisions where ornamental material on the clothing inherently tells the purchasing public the source of the goods (e.g., as collateral products to known goods or services).
    • In re T.S. Designs, Inc., Serial No. 77251039 (TTAB 2010)
      • Although applicant attempts to rely on the theory of "secondary source," there is no factual parallel herein to reported decisions where ornamental material on the clothing inherently tells the purchasing public the source of the goods (e.g., as collateral products to known goods or services). Compare In re Olin Corporation, 181 USPQ 182 (TTAB 1973); In re Expo '74, 189 USPQ 48 (TTAB 1975); and In re Watkins Glen International, Inc., 227 USPQ 727 (TTAB 1985).
  • Applicant's use of its trade name on a shipping label similarly does not by itself create trademark use.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • Applicant's use of its trade name on a shipping label similarly does not by itself create trademark use. In re Reinforced Molding Corporation, 152 USPQ 820, 821 (TTAB 1967) ("Since the corporate name is being used with applicant's address and in a subordinate manner, the immediate suggestion is that it is not being used as a trademark").
  • As is the case with any trademark, mere intent that a word, name, symbol or device function as a trademark or service mark is not enough in and of itself.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • As is the case with any trademark, mere intent that a word, name, symbol or device function as a trademark or service mark is not enough in and of itself. See In re Morganroth, 208 USPQ 284 (TTAB 1980). Thus, the mere fact that applicant describes the sound of its products as "trademarked" on the AmberWatch.com website and in press releases regarding the product, does not necessarily mean that the sound in fact performs as a trademark.16
  • Case Finding: Applicant argues that the sound would be perceived as an indication of the source of its product. However, much of the evidence on which applicant relies to support its argument is essentially in the nature of evidence of acquired distinctiveness. As noted, because applicant does not seek registration under Section 2(f), such evidence is inapposite.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Applicant argues that the sound would be perceived as an indication of the source of its product. However, much of the evidence on which applicant relies to support its argument is essentially in the nature of evidence of acquired distinctiveness. As noted, because applicant does not seek registration under Section 2(f), such evidence is inapposite.
  • Case Finding: Applicant has not submitted evidence that convinces us that customers would understand that the name in the return address, which normally identifies the name of the entity that shipped the contents of the package, functions in applicant's case also as a trademark for the unidentified goods inside the package.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • Applicant has not submitted evidence that convinces us that customers would understand that the name in the return address, which normally identifies the name of the entity that shipped the contents of the package, functions in applicant's case also as a trademark for the unidentified goods inside the package.
  • Case Finding: In this case, applicant's LEADING EDGE TONERS points to applicant being a distributor of goods of other parties and/or the services of distributing those goods, e.g., "Leading Edge Toners Best Prices for Tektronix Toners" and "The Price Leader for Xerox/Tektronix Toner."
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • In this case, applicant's LEADING EDGE TONERS points to applicant being a distributor of goods of other parties and/or the services of distributing those goods, e.g., "Leading Edge Toners Best Prices for Tektronix Toners" and "The Price Leader for Xerox/Tektronix Toner."
  • Case Finding: LEADING EDGE TONERS fails to associate the mark with the goods as required.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • Looking at all the multiple uses of the term LEADING EDGE TONERS on the specimens, including the original specimens, and considering them individually and their entire impression, we cannot conclude that purchasers would understand that the term LEADING EDGE TONERS is used as a trademark for the goods identified in the three applications. Rather, the uses point to the fact that Leading Edge Toners is a retail/distributor of toner and similar products of others. Therefore, we agree with the examining attorney that the term does not function as a trademark for the goods in the subject applications. The term fails to associate the mark with the goods as required by Lands' End.
  • Case Finding: Refusal under Sections 1, 2 and 45 and the question of whether applicant's proposed mark functions as a trademark.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • We first address the refusal under Sections 1, 2 and 45 and the question of whether applicant's proposed mark functions as a trademark.
  • Case Finding: The likelihood that consumers will so perceive these words on the label is enhanced because the label contains two clear source identifiers, namely "tsdesigns.com" and "printing t-shirts for good," the latter specifically bearing the informal "TM" designation, while the phrase Clothing Facts does not.
    • In re T.S. Designs, Inc., Serial No. 77251039 (TTAB 2010)
      • The likelihood that consumers will so perceive these words on the label is enhanced because the label contains two clear source identifiers, namely "tsdesigns.com" and "printing t-shirts for good," the latter specifically bearing the informal "TM" designation, while the phrase Clothing Facts does not.
  • Case Finding: The record in these cases does not include such a showing and certainly does not show the sound of applicant's alarms to be so distinctive that it can be registered on the Principal Register without a showing of acquired distinctiveness. The refusal under Sections 1, 2 and 45 is affirmed in each case.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • The record in these cases does not include such a showing and certainly does not show the sound of applicant's alarms to be so distinctive that it can be registered on the Principal Register without a showing of acquired distinctiveness. The refusal under Sections 1, 2 and 45 is affirmed in each case.
  • Case Finding: The specimen only shows use of the term in the "Ship From" section of the label where it serves as a return address and does not indicate that the term is used as a trademark.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • In this case, the specimen only shows use of the term LEADING EDGE TONERS in the "Ship From" section of the label where it serves as a return address. The specimen does not indicate that the term LEADING EDGE TONERS is used as a trademark. See, e.g., In re Walker Process Equipment Inc., 233 F.2d 329, 110 USPQ 41, 43 (CCPA 1956) ("[E]ach of the specimens includes the words ‘Aurora Illinois' or ‘Aurora Ill. U.S.A.' displayed in such a manner as to make it clear they indicate the location of Walker Process Equipment Inc."); In re Lyndale Farm, 186 F.2d 723, 88 USPQ 377, 381- 82 (CCPA 1951) ("Furthermore, the inference is created by the addition of the address ‘Floydada, Texas' to the placard that the use here involved does not so much distinguish appellant's cattle as it identifies appellant as the source of the shipment while the crate and its contents are in transit. That is trade name usage as distinguished from trade mark usage. We think the denial of registration of ‘Lyndale Farm' on the principal register because of failure to show trade mark usage is, on the record before us, well founded").
  • Case Finding: There is no showing of acquired distinctiveness for this matter. While the usage of the image of the entire label device on, inter alia, the goods, delivery trucks, and trade show exhibits, demonstrates applicant's efforts to acquire distinctiveness for this imagery, nothing in the record shows promotion of the term Clothing Facts alone as a mark.
    • In re T.S. Designs, Inc., Serial No. 77251039 (TTAB 2010)
      • Similarly, there is no showing of acquired distinctiveness for this matter. While the usage of the image of the entire label device on, inter alia, the goods, delivery trucks, and trade show exhibits, demonstrates applicant's efforts to acquire distinctiveness for this imagery, nothing in the record shows promotion of the term Clothing Facts alone as a mark.
  • Case Finding: We appreciate that this imagery involves a humorous play on the USFDA's ubiquitous nutrition labeling device and is designed to communicate applicant's commitment to social justice and environmental stewardship. However, in this context, we agree with the Trademark Examining Attorney that prospective consumers will view the designation Clothing Facts, as used on the entire label device, as informational matter, not as a source identifier for the shirts.
    • In re T.S. Designs, Inc., Serial No. 77251039 (TTAB 2010)
      • We appreciate that this imagery involves a humorous play on the USFDA's ubiquitous nutrition labeling device and is designed to communicate applicant's commitment to social justice and environmental stewardship. However, in this context, we agree with the Trademark Examining Attorney that prospective consumers will view the designation Clothing Facts, as used on the entire label device, as informational matter, not as a source identifier for the shirts.
  • Case Finding: We note that applicant has not applied to register this entire "label," but only the designation Clothing Facts. While the display of the words in the context of this entire label is relevant to our inquiry regarding how the words are likely to be perceived, we cannot assume that prospective consumers would make an association between applicant's label and the FDA label device. Nor can we assume that any such association would, as a matter of course, result in recognition of the words "Clothing Facts" as a mark.
    • In re T.S. Designs, Inc., Serial No. 77251039 (TTAB 2010)
      • We note that applicant has not applied to register this entire "label," but only the designation Clothing Facts. While the display of the words in the context of this entire label is relevant to our inquiry regarding how the words are likely to be perceived, we cannot assume that prospective consumers would make an association between applicant's label and the FDA label device. Nor can we assume that any such association would, as a matter of course, result in recognition of the words "Clothing Facts" as a mark.
  • Case Finding: When listeners hear the closing line "Brought to you by the AmberWatch Foundation" they will not realize that the alarm sound is meant as an indicator of source of a particular product because the sound is not promoted as a distinctive trademark. The PSAs do not mention what the sound comes from, only that it is a sound signaling that a child may be in danger.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • When listeners hear the closing line "Brought to you by the AmberWatch Foundation" they will not realize that the alarm sound is meant as an indicator of source of a particular product because the sound is not promoted as a distinctive trademark. The PSAs do not mention what the sound comes from, only that it is a sound signaling that a child may be in danger.
  • Cases where phrases found not registerable because they would be perceived as admonitions or informaitonal.
    • In re T.S. Designs, Inc., Serial No. 77251039 (TTAB 2010)
      • The Trademark Examining Attorney disagrees and relies upon cases such as In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) [the wording DRIVE SAFELY not registrable because it would be perceived only as an everyday, commonplace safety admonition and not as a trademark for "automobiles and structural parts therefor"]; and In re Manco, Inc., 24 USPQ2d 1938, 1942 (TTAB 1992) [the wording THINK GREEN is not registrable because it would be perceived only as an informational slogan encouraging environmental awareness and not as a trademark for weather stripping and paper products].
  • Congress has also required that an applicant, in most cases, provide specimens of its use of the mark in commerce prior to registration.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • Congress has also required that an applicant, in most cases, provide specimens of its use of the mark in commerce prior to registration.
  • Congress has specifically provided for the registration of several types of marks.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • Congress has specifically provided for the registration of several types of marks.
  • Csae Finding: Discussion of evidence showing applicant's use, or lack there of, of its sound mark.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Applicant emphasizes its use of the proposed mark aurally in ads whenever possible and in its characterization of the sound as unique when it cannot be played. The record, however, contains no information on radio or television advertising by applicant of the product, whether or not involving aural use of the sound. Applicant asserts that it has "begun a radio and television campaign in which celebrities advertise the product and the sound mark is played," (briefs, p. 7), but the record contains evidence only of AmberWatch Foundation PSAs, not of product advertisements.17 Also, while applicant's website invites visitors to click on a link to hear the sound of its product, and refers to the sound as "unique," the record does not reveal how many visitors to the website actually have clicked on the link to listen to the sound. Nor does the website describe the sound or instruct visitors what to listen for if they were to inspect a personal alarm in a store of one of the retailers that sells applicant's product. In fact, there is no indication in the record whether a prospective purchaser of the product would even be able to listen to its sound when holding a packaged product in a store, or would be able to "click to hear" the sound when shopping for the product on a retailer's website.
  • Discussion of situation where applicant's term appears in the return address of a shipping label where customers look for the name of the individual, organization, or company that shipped the package.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • "Even more so in this case, applicant's term appears in the return address of a shipping label where customers look for the name of the individual, organization, or company that shipped the package. See In re Baker Industries, Inc., 565 F.2d 1211, 196 USPQ 151, 151-52 (CCPA 1977): ""During the prosecution, appellant presented specimens, postal meter mailing tapes, which showed the actual use of the words in commerce. The mailing tapes are affixed to packages in which appellant's goods are mailed. The words, which appellant argues are in the nature of a slogan, are used on the packages in conjunction with appellant's trade name, Baker Industries… [W]e conclude that appellant's slogan does not identify and distinguish its goods in accordance with the statutory definition of "trade-mark," but, rather, serves to distinguish appellant from other companies having the name, Baker."""
  • Discussion of use of sound in an advertisement to establish it as a mark.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Applicant places great reliance on the PSA campaign and the fact that the sound is played in each announcement. However, we agree with the examining attorney that such evidence is not significant. First, it is not at all clear that listeners would perceive the sound, as played in the PSAs, to be anything other than an alarm sound. The PSAs do not refer to the sound as coming from a particular alarm from a particular source or describe the sound as distinctive and explain why it should be considered so. Nor do the PSAs mention applicant in any way. Each PSA ends with an announcer explaining that the announcement was "Brought to you by the AmberWatch Foundation." Under these circumstances, the PSAs do not promote recognition of a distinctive sound but, rather, only awareness that when an alarm sounds, a child may be in danger.
  • Even if applicant is an authorized distributor of others' goods, this fact does not make applicant's service mark into a trademark for the manufacturers' goods.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • In the same way, even if applicant is an authorized distributor of others' toner cartridges, this fact does not make applicant's service mark into a trademark for the manufacturers' goods.
  • Examining attorneys may accept any catalog or similar specimen as a display associated with the goods, provided: (1) it includes a picture of the relevant goods; (2) it shows the mark sufficiently near the picture of the goods to associate the mark with the goods; and (3) it includes the information necessary to order the goods.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • "The TMEP also sets out factors for examining attorneys to follow when considering whether catalogs and other specimens are acceptable: ""Accordingly, examining attorneys may accept any catalog or similar specimen as a display associated with the goods, provided: (1) it includes a picture of the relevant goods; (2) it shows the mark sufficiently near the picture of the goods to associate the mark with the goods; and (3) it includes the information necessary to order the goods (e.g., an order form, or a phone number, mailing address, or e-mail address for placing orders).

        However, the mere inclusion of a phone number, Internet address and/or mailing address on an advertisement describing the product is not in itself sufficient to meet the criteria for a display associated with the goods. There must be an offer to accept orders or instructions on how to place an order. In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997) (fact sheet brochures held not to qualify as a catalog under Lands' End, where the specimen failed to show the mark near a picture of the goods, and included no information as to how to order the goods). It is not necessary that the specimen list the price of the goods."" TMEP § 904.03(h) (5th ed. rev. September 2007)."

  • For goods, a mark shall be deemed to be in use in commerce when 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 and the goods are sold or transported in commerce.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • For goods, a "mark shall be deemed to be in use in commerce … [when] 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 … [and] the goods are sold or transported in commerce." Section 45, 15 U.S.C. § 1127.
  • For goods, the mark is used in commerce when 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..
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • For goods, the mark is used in commerce when 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." Id.
  • For services, a mark is used in commerce when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • For services, a mark is used in commerce "when it is used or displayed in the sale or advertising of services and the services are rendered in commerce." Id.
  • However, the mere inclusion of a phone number, Internet address and/or mailing address on an advertisement describing the product is not in itself sufficient to meet the criteria for a display associated with the goods. There must be an offer to accept orders or instructions on how to place an order.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • "The TMEP also sets out factors for examining attorneys to follow when considering whether catalogs and other specimens are acceptable: ""Accordingly, examining attorneys may accept any catalog or similar specimen as a display associated with the goods, provided: (1) it includes a picture of the relevant goods; (2) it shows the mark sufficiently near the picture of the goods to associate the mark with the goods; and (3) it includes the information necessary to order the goods (e.g., an order form, or a phone number, mailing address, or e-mail address for placing orders).

        However, the mere inclusion of a phone number, Internet address and/or mailing address on an advertisement describing the product is not in itself sufficient to meet the criteria for a display associated with the goods. There must be an offer to accept orders or instructions on how to place an order. In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997) (fact sheet brochures held not to qualify as a catalog under Lands' End, where the specimen failed to show the mark near a picture of the goods, and included no information as to how to order the goods). It is not necessary that the specimen list the price of the goods."" TMEP § 904.03(h) (5th ed. rev. September 2007)."

  • If a retail store also uses the name of the store on the goods themselves, the same mark can serve both a trademark and service mark function.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • However, if a retail store also uses the name of the store on the goods themselves, the same mark can serve both a trademark and service mark function. Giant Food Inc. v. Rosso and Mastracco, Inc., 218 USPQ 521, 524 (TTAB 1982) ("The word ‘GIANT' appears on several hundred products marketed in opposer's stores").
  • Implicit in the statutory definition of a ‘trademark' is a requirement that there be a direct association between the matter sought to be registered and the goods identified in the application, that is, that the matter is used in such a manner that it would be readily perceived as identifying such goods.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • "Implicit in the statutory definition of a ‘trademark' … is a requirement that there be a direct association between the matter sought to be registered and the goods identified in the application, that is, that the matter is used in such a manner that it would be readily perceived as identifying such goods." See N.V. Organon, supra, 79 USPQ2d at 1649. See also, 15 U.S.C. §1127; and In re Roberts, 87 USPQ2d 1474, 1478 (TTAB 2008).
  • Internet addresses, even when used separately from a website, do not necessarily show service mark use much less trademark use for goods sold on the website.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • Internet addresses, even when used separately from a website, do not necessarily show service mark use much less trademark use for goods sold on the website. In re Eilberg, 49 USPQ2d 1955, 1956 (TTAB 1998) ("In other words, the asserted mark WWW.EILBERG.COM merely indicates the location on the Internet where applicant's Web site appears.
  • It is a matter of common knowledge that goods sold in department stores are more frequently than not identified by the trademarks of the producers of the merchandise.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • The board has held that: "It is a matter of common knowledge that retail department store services encompass the sale of clothing including men's and boys' slacks but it is also a matter of common knowledge that goods sold in department stores are more frequently than not identified by the trademarks of the producers of the merchandise." Vornado, 169 USPQ at 501.
  • It is important to focus on likely consumer perceptions.
    • In re T.S. Designs, Inc., Serial No. 77251039 (TTAB 2010)
      • The Trademark Examining Attorney is correct in noting the importance of focusing on likely consumer perceptions. These reported decisions involve designations that were found to be perceived as serving a different purpose than identifying the source of goods.
  • Lands' End Inc. v. Manbeck, 797 F. Supp. 311, 24 USPQ2d 1314 (E.D. Va. 1992) illustrates one way an applicant can comply with the specimen requirements via a website.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • Applicant and the examining attorney both discuss the case of Lands' End Inc. v. Manbeck, 797 F. Supp. 311, 24 USPQ2d 1314 (E.D. Va. 1992), which illustrates one way an applicant can comply with the provisions discussed above, and whether it applies to the case at hand.
  • Obviously, a website can be used for multiple purposes and the simple fact that a term is used as part of the internet address does not mean that it is a trademark for the goods sold on the website.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • Obviously, a website can be used for multiple purposes and the simple fact that a term is used as part of the internet address does not mean that it is a trademark for the goods sold on the website.
  • One must look to the perception of the ordinary customer to determine whether the term functions as a trademark.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • We must look to the perception of the ordinary customer to determine whether the term functions as a trademark. In re Bailey Meter Co., 128 USPQ 292, 293 (TTAB 1961) ("It is well established, however, that a package, like a configuration of an article or dress of the goods, cannot be registered, even on the Supplemental Register, unless the adoption thereof results from an intention primarily to indicate origin of the goods rather than from considerations of utility and function, and it is of such nature that the ordinary purchaser would be likely to regard it as indicating such origin"). See also In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227, 229 (CCPA 1960) ("Before there can be registrability, there must be a trademark (or a service mark) and, unless words have been so used, they cannot qualify for registration") and Morganroth, 208 USPQ at 288 ("This necessitates a determination as to whether it is used and provided in such a manner so as both to make it known to purchasers and to have such individuals associate it with the goods as an identification symbol").
  • Regarding a FedEx shipping label, we agree with the examining attorney that the label does not demonstrate good trademark use.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • Regarding applicant's FedEx shipping label, we agree with the examining attorney that the label does not demonstrate good trademark use.
  • Specimans showing use of a term as the complete return address of applicant with no distinctive stylization other than the use of uppercase letters does not demonstrate trademark use for the goods.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • Unlike the specimens in Univar, 20 USPQ2d at 1869, the original specimens here use the term as the complete return address of applicant with no distinctive stylization other than the use of uppercase letters. Therefore, we agree with the examining attorney that the original specimens do not demonstrate trademark use for the goods in the three applications in this appeal.
  • The association must be one of origin or source, and one that would be drawn between the sound and the product by prospective purchasers, when they hear the sound.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Of course, because applicant's products actually emit the sound proposed for registration as a mark, there is in a purely technical sense a direct association of the sound and the product. But that is not the type of direct association contemplated by the statute and case law. Rather, the association must be one of origin or source, and one that would be drawn between the sound and the product by prospective purchasers, when they hear the sound. See General Electric, supra, 199 USPQ at 563 (the sound must "be associated with the source or event with which it is struck").
  • The fact that applicant displays its mark on a website instead of on the outside or inside of the store does not mean that it is more likely to serve as a trademark for the goods sold on the site.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • The fact that applicant displays its mark on a website instead of on the outside or inside of the store does not mean that it is more likely to serve as a trademark for the goods sold on the site.
  • The fact that the term may serve as a service mark does not necessarily show that the term is also a trademark for applicant's goods.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • The fact that the term may serve as a service mark to identify retail or online store services does not necessarily show that the term is also a trademark for applicant's goods.
  • The mere fact that applicant is a retailer selling products of others does not by itself establish that applicant's mark, which may function as its trade name or service mark, necessarily also functions as a trademark for the goods applicant sells.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • The mere fact that applicant is a retailer selling products of others does not by itself establish that applicant's mark, which may function as its trade name or service mark, necessarily also functions as a trademark for the goods applicant sells. See Vornado Inc. v. Oshkosh B'Gosh, Inc., 169 USPQ 500, 501 (TTAB 1971) (citation omitted): "A mark or name identifying retail department store services identifies, in effect, the establishment or stores of the owner of such mark or name. In the particular case "TWO GUYS" identifies opposer's discount stores but it does not identify the goods purchased in the stores of opposer. Certainly a merchant can use a mark to identify goods as originating with him. There is no proof, however, that opposer applies "TWO GUYS" as a mark to identify any goods."
  • The mere fact that the name of a store appears on the sign outside or inside the store does not convert the service mark into a trademark for all the goods that are sold in those stores.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • The mere fact that the name of a store appears on the sign outside or inside the store does not convert the service mark into a trademark for all the goods that are sold in those stores.
  • The mere use of TM or "trademarked" does not automatically transform a word, design, color or sound into a trademark.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • FOOTNOTE 16 "There is nothing in the record to indicate what applicant means when it refers to the sound as "trademarked." It is not federally registered and there is no evidence that it is the subject of any state registration. Accordingly, we can only take these references to be the equivalent of a TM designation or the like, i.e., an assertion or claim that the sound serves the function of a trademark. However, the mere use of TM or "trademarked" does not automatically transform a word, design, color or sound into a trademark. See In re Aerospace Optics Inc., 78 USPQ2d 1861, 1864 (TTAB 2006)."
  • The name of a business or company is a trade name and there is no provision in the Trademark Act for registration of trade names which are used solely as trade names. However, if a trade name is used in such a manner that it also functions as a trademark or service mark, it may be registrable.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • "The name of a business or company is a trade name and there is no provision in the Trademark Act for registration of trade names which are used solely as trade names. However, if a trade name is used in such a manner that it also functions as a trademark or service mark, it may be registrable." In re Stewart Sandwiches International, Inc., 220 USPQ 93, 94 (TTAB 1983) (citations omitted).
  • The Office currently requires the submission of one specimen with use-based applications and it defines a trademark specimen as a label, tag, or container for the goods, or a display associated with the goods.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • The Office currently requires the submission of one specimen with usebased applications (37 CFR § 2.56(a)) and it defines a trademark specimen as "a label, tag, or container for the goods, or a display associated with the goods." 37 CFR § 2.56(b)(1).
  • The question of whether a name used as a trade name also performs the function of a trademark and/or a service mark is one of fact and is determined from the manner in which the name is used and the probable impact thereof upon purchasers and prospective customers.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • "The question of whether a name used as a trade name… also performs the function of a trademark and/or a service mark is one of fact and is determined from the manner in which the name is used and the probable impact thereof upon purchasers and prospective customers." In re Univar Corp., 20 USPQ2d 1865, 1866 (TTAB 1991).
  • The question under the Lands' End case is whether the mark is used in such a manner as to associate the marks with the goods.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • Thus, the question under Lands' End is whether the mark is used in such a manner as to associate the marks with the goods.
  • The Trademark Act § 1(a)(1) requires an applicant who is the owner of a trademark used in commerce to file such number of specimens or facsimiles of the mark as used as may be required by the Director.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • The Trademark Act § 1(a)(1) (15 U.S.C. § 1051(a)(1)) requires an applicant who is the owner of a trademark used in commerce to file "such number of specimens or facsimiles of the mark as used as may be required by the Director."
  • The TTAB may look at the substitute specimen to determine whether applicant's term is used as a trademark to identify its identified goods.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • We must look at the substitute specimen to determine whether applicant's term is used as a trademark to identify its identified goods. Compare Dell, 71 USPQ2d at 1729 (Mark was only listed as the fifth feature in the sentence: "QUIETCASE™ acoustic environment provides easy access to the system interior and supports tool-less upgrades and maintenance of key internal components." The board determined that "QUIETCASE is sufficiently prominent that consumers will recognize it as a trademark") with Osterberg, 83 USPQ2d at 1223 ("Unlike the mark in the Dell case where the mark at issue was set out from the surrounding text as the first word in a bullet list, CondomToy condom is not so prominent that consumers will recognize it as a trademark for condoms").
  • To state the obvious, every audible alarm emits some sort of sound, many similar to that of applicant's product; and we do not find that consumers are predisposed to equate such sounds with the sources of the products that emit them.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • To state the obvious, every audible alarm emits some sort of sound, many similar to that of applicant's product; and we do not find that consumers are predisposed to equate such sounds with the sources of the products that emit them. See Wal-Mart Stores, supra, 54 USPQ2d at 1069 ("In the case of product design, as in the case of color, we think consumer predisposition to equate the feature with the source does not exist.").
  • TThe mere fact that appellant's goods are placed in bags bearing the words sought to be registered during a particular phase of the transportation process does not, ipso facto, establish trademark usage of those words.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • As the CCPA has held: "[T]he mere fact that appellant's goods are placed in bags (bearing the words sought to be registered) during a particular phase of the transportation process does not, ipso facto, establish trademark usage of those words." In re The Pennsylvania Fashion Factory, Inc., 588 F.2d 1343, 200 USPQ 140, 142 (CCPA 1978).
  • While there are no rigid rules that would require that use of a term in various locations on specimens results in the use not being trademark use, on the other hand, there is no per se rule that any use of a mark on a website is trademark use for all goods sold on that web page.
    • In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008)
      • While we agree with applicant that there are no rigid rules that would require that use of a term in various locations on specimens results in the use not being trademark use, on the other hand, there is no per se rule that any use of a mark on a website is trademark use for all goods sold on that web page.
In re T.S. Designs, Inc., Serial No. 77251039 (TTAB 2010) In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009) In re Supply Guys, Inc., Serial Nos. 77027094, 77027097, and 77027099 (TTAB 2008) L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007) Grand Total
In re Roberts, 87 USPQ2d 1474 (TTAB 2008) 1
In re Osterberg, 83 USPQ2d 1220 (TTAB 2007) 1
In re Aerospace Optics Inc., 78 USPQ2d 1861 (TTAB 2006) 1
In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) 1
In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004) 1
In re Los Angeles Police Revolver and Athletic Club Inc., 69 USPQ2d 1630 (TTAB 2003) 1
Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000) 1
In re Eilberg, 49 USPQ2d 1955 (TTAB 1998) 1
In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997) 1
Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846 (Fed. Cir. 1993) 1
In re Manco Inc., 24 USPQ2d 1938 (TTAB 1992) 1
Lands' End Inc. v. Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992) 1
In re Univar Corp., 20 USPQ2d 1865 (TTAB 1991) 2 2
In re Watkins Glen International, Inc., 227 USPQ 727 (TTAB 1985) 1
Power Test Petroleum Distributors, Inc. v. Calcu Gas, Inc., 754 F.2d 91, 225 USPQ 368 (2d Cir. 1985) 2 2
In re Stewart Sandwiches International, Inc., 220 USPQ 93 (TTAB 1983) 1
Giant Food Inc. v. Rosso and Mastracco, Inc., 218 USPQ 521(TTAB 1982) 1
In re Morganroth, 208 USPQ 284 (TTAB 1980) 2
In re Bright of America Inc., 205 USPQ 63, 71 (TTAB 1979) 1
Safe-T Pacific Company v. Nabisco, Inc., 204 USPQ 307 (TTAB 1979) 1
In re General Electric Broadcasting Co. Inc., 199 USPQ 560 (TTAB 1978) 1
In re The Pennsylvania Fashion Factory, Inc., 588 F.2d 1343, 200 USPQ 140 (CCPA 1978) 1
In re Baker Industries, Inc., 565 F.2d 1211, 196 USPQ 151 (CCPA 1977) 1
In re Expo '74, 189 USPQ 48 (TTAB 1975) 1
In re Olin Corporation, 181 USPQ 182 (TTAB 1973) 1
Vornado Inc. v. Oshkosh B'Gosh, Inc., 169 USPQ 500 (TTAB 1971) 1
In re Reinforced Molding Corporation, 152 USPQ 820 (TTAB 1967) 1
In re Bailey Meter Co., 128 USPQ 292 (TTAB 1961) 1
In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (CCPA 1960) 1
In re Walker Process Equipment Inc., 233 F.2d 329, 110 USPQ 41 (CCPA 1956) 1
In re Lyndale Farm, 186 F.2d 723, 88 USPQ 377 (CCPA 1951) 1
Grand Total 4 6 22 2 34

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. 1053. Service marks registrable

Subject to the provisions relating to the registration of trademarks, so far as they are applicable, service marks shall be registrable, in the same manner and with the same effect as are trademarks, and when registered they shall be entitled to the protection provided in this chapter in the case of trademarks. Applications and procedure under this section shall conform as nearly as practicable to those prescribed for the registration of trademarks.

 

 

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.