TRADEMARKS AND TRADEMARK REGISTRATION

Gasaway                                      Fall, 2000

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        A.Definitions - Section 1127

                1.Trademark (TM) - Includes any word, name, symbol or devise, or combination thereof -

a.Used by a person, or

b.Which a person has a bona fide intention to use in commerce and applies to 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 or the goods, even if that source is unknown.

a.Examples, Colgate-Palmolive Company, Proctor & Gamble, etc.

b.A distinction is not so pronounced between trademark and trade name on the ground of

             unfair competition even if it is technically not serving as a trademark.

a.Used by a person, or

b.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 service 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.

c.The requirements, attributes, etc., of a service mark correspond to those relating to trademark.

d.Prior to the 1946 act, service marks as such were not registrable although some marks that were registered 
                                 as trademarks probably would be classified as service marks today.

e.While some marks that dealt with services were protected under the law of unfair competition, the 
            “law” with respect to service marks has not been as fully developed as has the law of trademarks.

4.Certification mark - Any word, name, symbol, or device, or combination thereof -

a.Used by a person other than its owner, or

b.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 principle 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.

c.A certification mark was intended to apply to such marks as union marks, the Good Housekeeping 
            Seal of Approval, the Underwriter’s Seal of Approval, etc.

d.It is important to note that a certification mark is one used by other than the owner thereof.

e.If a mark is used with respect to goods or services supplied by the owner of the mark, it is a 
             trademark or a service mark rather than a certification mark,

5.Collective Mark - TM or SM -

a.Used by the members or a cooperative, an association or other collective group or organization, or

b.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.

c.The collective mark should not be used by the owners thereof, i.e., the collective, cooperative, 
             association, etc., but is used by someone other than the owner of the mark.

d.It is often difficult to distinguish between certification marks and collective marks.It has been 
            contended that, except for marks of fraternal organizations, any marks that might fall within the

            definition of a collective mark can as properly be classed as a certification mark.

6.Under the Lanham Act, the term “mark” is used to encompass both “trademark” and “service mark” as well 
            as “collective mark” and “certification mark.”

1.Consists 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.

2.Consists of or comprises the flag or coat of arms other insignia of the United States, or any State or municipality,
            or any foreign nation, or any simulation thereof.

3.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 U.S. during the life of his 
            widow, if any, except by the written consent of the widow.

4.Consists of or comprises a mark which also resembles a mark registered in the Patent Office or a mark or trade 
             name previously used in the U.S. by another and not abandoned, as to be likely, when applied to the goods of the 
             applicant, to cause confusion, or to cause mistake, or to deceive.

    a.When applied to the goods of the applicant is merely descriptive or deceptively misdescriptive of 
                them.

   b.When applied to the goods of the applicant is primarily geographically descriptive or deceptively 
                misdescriptive of them, except as indications or regional origin may be registrable as collective and 
                certification marks.

  c.Is primarily merely a surname.

1.The mark is abandoned or

2.The mark becomes the generic or common descriptive name of the goods.Section 1127 provides that a 
            mark is deemed abandoned when the registrant discontinues use of the mark with intent not to esume.
   Intent  not to resume may be inferred from circumstance and not use for two consecutive years is prima facie 
            evidence of abandonment.

            A.Benefits of federal registration

1.Suit may be brought in federal court even in absence of diversity of citizenship.

2.It is possible to obtain treble damages for infringement of a registered mark.

3.Use by related companies may not render the mark invalid.

4.A federal registration is a prerequisite to the obtaining of a registration in some foreign countries, but not all 
            countries will accept Supplemental Register registrations.

5.Fair competitors will avoid using similar marks because a search of the Patent and Trademark Office (PTO) 
            records will reveal registration.

                    1.A written application in affidavit or declaration form executed by the applicant or an officer of the applicant.
                                The application must specify the following:

a.Domicile and citizenship.

b.First use of the mark.

c.First use of the mark in commerce.

d.Indication of the goods with which the mark will be used.

e.The manner or mode in which the mark is used in connection with such goods.

2.A declaration or verification by the applicant must accompany or be included in the application.The
            declaration must include:

a.That the declarant believes he or she is the owner of the mark sought to be registered.

b.That the mark is in use in commerce.

c.That to the best of his or her knowledge, no one else has the right to use such mark in commerce
            either in its identical form or in such resemblance as to be likely to cause mistake or confusion or to 
            deceive.

d.The Trademark Rules of Practice provide for the optional filing of this declaration in lieu of an oath, 
            affidavit, verification or other sworn statement required in connection with the filing of various 
            documents in the PTO.

a.It can be typewritten if registration is sought for a word in black lettering.

b.If the mark sought to be registered is a logo or design, a pen and ink drawing which a draftsperson or 
            the Patent Trademark Office can prepare (for a charge).

1.The drawing must be on bond paper or other pure white durable paper having a 
            calendared and smooth surface.The paper must be 8” wide and 11-13” long.

2.There is a fancy chart of symbols to illustrate color, for the drawing must be in black and 
            white.

4.Five labels or other specimens or facsimiles evidencing use of the mark in connection 
            with goods must accompany the application.

5.A registration fee must accompany the application.

 4.    Registration forms are available on the PTO's website and registration can be completed online.  <url> 
        http://www.uspto.gov/web/forms/index.html#TM

1.If the applicant responds, this response is called an amendment.

2.An applicant has six months to reply to an “office action” or the application is deemed abandoned.

D.Then a thorough search of the PTO records is conducted to see if the proposed mark satisfies various sections of the 
                Lanham Act.

E.Assume the mark is registered on the Principal Register.

1.The application is forwarded to the government printer and the applicant receives a “Notice of Publication” which 
            states that the application has been allowed and that the trademark will be published in the Official Gazette on a 
            certain date.

2.For thirty days after publication in the Gazette any party believing he or she would be damaged by the registration 
            may file a “Notice of Opposition” against the application.

3.If the application contests the opposition, then the parties will be forced to litigate their contentions within the PTO 
            to determine whether the registration will be granted.

4.If the registration is allowed, the “Certificate of Registration” will issue approximately four months after publication 
            of the mark in the Official Gazette.

F.If the examiner rejects the mark as being prohibited by one of the sections of the Lanham Act, an “office action” is issued 
             rejecting the mark.

1.The applicant may either abandon the mark or file an amendment disagreeing with the reasons the mark is 
             rejected and requesting the refusal of registration be withdrawn.

2.An appeal can also be taken eventually if necessary.

3.A second refusal by the examiner is considered as final by the applicant for purposes of appeal.

4.The applicant has six months to either file an appeal or to remedy the basis for the rejection by the introduction of 
            new evidence or to otherwise convince the examiner as to the allowability of the mark.

G.Federal trademark registration is for a period of ten years and conveys the right to use the symbol R.

1.However, the registration will be canceled at the end of five years unless an affidavit of use is filled with the PTO.   This typically is called the Sixth Year Continued Use Affidavit.

2.The affidavit simply says that the mark is still in use or that non-use is due to special circumstances with no intent 
            to abandon the mark.

3.Each registration may be renewed for periods of ten years.

4.Fees for initial registration and for renewals are increased fairly regularly.

1.Upon filing an intent-to-use application and paying the prescribed fee, the application is examined like a 
            use-based application.

2.If registrable, the mark will be published for opposition in the Trademark Official Gazette.

3.Absent opposition, the applicant receives a “notice of allowance” rather than a certificate of registration.

a.The applicant then has six months to file a verified use statement with mark specimens.The use 
             statement must recite:

1.Use in commerce;

2.The date of first use in commerce;

3.The goods or services specified in the notice of allowance on which the use has been 
            made; and

4.The mode or manner of use.

b.The initial six-month period for filing the statement of use for another six-month period.

c.After that, extensions may be granted on a showing of good cause for periods aggregating not more 
             than an additional 24 months.

d.An intent-to-use applicant has, at a maximum, 36 months from notice of allowance to put the mark to 
              use and file a statement to that effect with the PTO.

A.Trademark statutes vary from state to state but in recent years there have been efforts to secure uniform state trademark 
             registration legislation.

1.Duration of registration varies from state to state with ten years being the norm.However, in some states, 
            registration is perpetual and some states require no registration.

2.State registration affords no protection beyond the boundaries of the state of registration, but there are reasons 
            for state registration.

a.If it is impossible to obtain a federal registration for such reasons as failure to meet the interstate 
            commerce requirement or because the mark has been held to be unregistrable, then there as benefits 
            to state registration.

b.State registration creates at least a limited public record of the mark and permits the registrant to 
            indicate that the mark is registered.

c.State registration is relatively simple, inexpensive and fast when compared to federal registration.

3.Some states have criminal penalties for counterfeiting marks.

B.North Carolina Trademark Registration Act Sec. 80-1, et. seq.

1.The trademark statute became effective in 1968 as a result of the adoption by the Legislature of the Model 
             Statute Trademark Bill promulgated by the United States Trademark Association.It was amended fairly 
             substantially in 1991.

2.Use is defined in 80-1.A trademark is deemed to be used:

a.When it is placed in any manner on the goods or their containers or on the tags or labels affixed 
             thereto and such goods are sold or otherwise distributed in the state, or

b.When it is used in any manner in connection with the sale or advertising of services in this state.

c.The term “use” means the bona fide use of a mark in North Carolina in the ordinary course of trade, 
             and not merely the reservation of a right to a mark.

3.Registrability is covered by 80-2 which closely follows the federal statute.However, there is no provision for 
            a Supplemental Register.

a.One files an application with Secretary of State, a $50.00 fee must accompany any application.

b.Necessary information includes name, address of applicant goods or services on which used, date 
            trademark was first used, statement the applicant is the owner of the trademark and no other 
           person in state has the right to use it.

4.Certificate of registration - 80-4 is issued by Secretary of State after a search of the State records.It is 
             effective for ten years.

a.The 1991 amendments require applicants to submit a specimen showing use of the mark and a 
             signed affidavit within six months following the expiration of a term of five years from the date of 
             registration or the last renewal of the registration.

b.Trademarks are renewable for ten years.

c.Although the statute is silent as to the symbol to denote registration, by custom it is TM.

5.The statute provides for assignments, sets out ground for infringements, etc.It also sets up a classification 
                scheme for categories of goods much like the federal system.

6.The Secretary of State is required to cancel registrations not renewed, those requested to be canceled by the 
            owner of the mark and any mark found by a court of competent jurisdiction that:

a.The mark has been abandoned.

b.The registrant is not the owner of the mark.

c.The registration was granted improperly.

d.The registration was obtained fraudulently.