IP-Docs - trademark

What is a trademark (TM) or service mark (SM)?

A trademark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout our website, the terms "trademark" and "mark" refer to both trademarks and service marks.

Size

Trademark drawings are typically 3.5" x 3.5" in size saved as 300 dpi black and white (jpg or tif) files.

Reasons for refusal?

Likelihood of confusion.
Primarily merely descriptive or deceptively misdescriptive.
Primarily geographically descriptive or primarily geographically deceptively; misdescriptive.
Primarily merely a surname; or
Ornamental.

This is not a complete list of all the possible grounds of refsal. See Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP), available at http://www.uspto.gov/web/offices/tac/tmep/ for a complete discussion of the grounds for refusal of registration of a mark.

Do Trademarks, Copyrights and Patents protect the same things?

No. Trademarks, copyrights and patents all differ. A copyright protects an original artistic or literary work; a patent protects an invention. For copyright information, go to http://lcweb.loc.gov/copyright/ For patent information, go to http://www.uspto.gov/main/patents.htm

Trademark Drawings

The "drawing" is a page which depicts the mark applicant seeks to register. In an application based on actual use, Section 1(a), 15 U.S.C. §1051(a), the drawing must show the mark as it is actually used, i.e., as shown by the specimens. In the case of an application based on a bona fide intention to use, Section 1(b), 15 U.S.C. §1051(b), the drawing must show the mark as the applicant intends to use it. In an application based on a foreign application or foreign registration, Sections 44(d) or 44(e), 15 U.S.C. §§1126(d) and (e), the drawing must depict the mark as it appears or will appear on the foreign registration. The applicant cannot register more than one mark in a single application. Therefore, the drawing must display only one mark.

If an applicant submits specimens, is a drawing still required?

Yes. A drawing is required in all applications, and is used by the Office for several purposes, including printing the mark in the Official Gazette, and ultimately, on the registration certificate itself. Specimens, on the other hand, are required as evidence that a mark is in actual use in commerce.

What is a specimen?

A specimen is a real-world example of how the mark is actually used on the goods or in the offer of services. Labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark. For a service mark, specimens may be advertising such as magazine advertisements or brochures. Actual specimens, rather than facsimiles, are preferred. However, if the actual specimens are bulky, or larger than 8½" x 11", then the applicant must submit facsimiles, (e.g., photographs or good photocopies) of the specimens. Facsimiles may not exceed 8½" x 11". ONE SPECIMEN IS REQUIRED FOR EACH CLASS OF GOODS OR SERVICES SPECIFIED IN THE APPLICATION.

Specimens are required in applications based on actual use in commerce, Section 1(a), 15 U.S.C. §1051(a), and must be filed with the Amendment to Allege Use, 15 U.S.C. §1051(c), or the Statement of Use, 15 U.S.C. §1051(d), in applications based on a bona fide intention to use the mark in commerce, Section 1(b), 15 U.S.C. §1051(b). Specimens are not required for applications based on Section 44 of the Trademark Act (for owners of foreign trademark applications and registrations), 15 U.S.C. §1126.

Trademark drawings require the talented eye of an artist, and the expertise of a skilled draftsperson to produce. NBKJ’s diversified team of illustrators includes: a patent attorney, drawing board technical and engineering illustrators, CAD operators and technical graphics specialists.