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Trademark Frequently Asked Questions

The answers to the following questions should be read as preparatory rather than as definitive.

 

Also see:

Copyright FAQs

Patent FAQs

Why should I protect my trademark by registering it with the U.S. Patent & Trademark Office?

A trademark may be the most valuable business asset you’ll ever own. It’s how consumers will recognize your brand, and it distinguishes your company or products in the marketplace. How would you value the Nike ® trademark? Isn’t the “Nike swoosh” just as valuable as all the inventory and buildings the company owns? We submit it is, since without the connecting swoosh, who would buy all that inventory? With the swoosh the product sells itself. Protect your trademark by filing an application for trademark registration with PatentHome today.

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How does a trademark protect my legal rights?

Trademark registration acts both as a shield and a sword. It acts as a shield by protecting the trademark’s usage, e.g., since a trademark registrant has superior rights over anyone else using the Mark, the registration acts as a shield to a lawsuit. The trademark can also act as a sword in that the owner has an enforceable legal right to stop anyone from using the registered trademark.

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How easy is it to file a trademark with PatentHome?

PatentHome allows you to seamlessly register your trademark on the Internet. Filing a trademark is quite easy through PatentHome because our website instructs the user how to enter all the information necessary to register a trademark. In addition our knowledgeable trained legal staff is available to answer any questions, as well as help the trademark owner take the necessary steps prior to filing the trademark application.

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Why should a trademark owner use PatentHome?

There are many legal issues to consider when filing a trademark application, and registration entails more than just filling out a form. If a trademark application is rejected it cannot be corrected by adding new matter. If you do not take the proper actions prior to filing an application you may have to start over from scratch and will lose the filing fee and filing date. The application filing date is vital for protecting the name/slogan to be used as a trademark. If you lose the filing date it’s possible you can lose the right to register the trademark.

Our attorneys give sound legal advice as to the actions you need to take prior to filing the application. We know the reasons why applications are rejected and can help you avoid those pitfalls. Once an application is filed it may be too late to correct it, but we can help you before you file. We won’t simply help you fill out a form, we will give you reliable legal advice.

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What is the difference between filing a trademark application with PatentHome and any other online trademark filing service?

We differ from most of the online trademark filing sites because we do more than just fill out a form. While other online trademark filing services may appear to be an inexpensive way to file a trademark application, they are basically just charging you to fill out the form. Why can’t you fill out the form yourself? The reason why you can’t do it yourself and the reason you should not use any other service is because you need sound legal advice as to what actions to take prior to filing the application. If it is not filed right the first time it may cost you in the long run. Pay now or pay more later.

Call PatentHome right now and we will give you the legal advice you absolutely need, and we will efficiently file the application for you.

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What Is a Trademark?

A Trademark is a form of intellectual property; it is an asset and has monetary value just like any other form of property. A trademark is usually expressed in the form of a word, symbol, or phrase; but it can also be a color, a smell, or sound used to identify a manufacturer’s or seller’s goods so as to indicate their source, and distinguish them from all other goods.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks used in interstate or foreign commerce may be registered with the U.S. Patent & Trademark Office (15 USC 1127).

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What is a service mark?

“Service mark” means any word, name, symbol, device, or any combination thereof:

  • used by a person;
  • in which a person has a bona fide commercial intention; and
  • is the subject of a registration application for the USPTO’s principal register so as to identify and distinguish the services (including a unique service) from the services of others; and to indicate the source of the services, even if that source is unknown.

“Trademark” and “mark” are commonly used to refer to both trademarks and service marks.

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How does trademark registration benefit the owner?

  • Trademark registration gives the owner an exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
  • Federal trademark registration is nationwide constructive notice to potential infringers that the registrant claims ownership of the trademark.
  • Trademark registration is evidence of a legal presumption of trademark ownership.
  • Trademark registration establishes jurisdiction in the U.S. Federal courts.
  • U.S. Trademark registration is a basis to obtain registration in foreign countries.
  • A U.S. trademark registration certificate may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

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Is a United States federal trademark registration limited to U.S. Citizens?

No, U.S. trademark registration is open to citizens of any country, but the applicant’s citizenship must be set forth in the record. If an applicant has citizenship in more than one country the applicant must designate which citizenship will be printed in the Official Gazette and on the certificate of registration.

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When can I use the designations “TM” or “SM” with a trademark on goods or services I sell?

There is no federal regulation against the use of the symbols “TM” or “SM” (trademark & service mark, respectively) without registration. However the use of these marks may be regulated by local, state, or foreign laws. These designations are often used by companies before a federal registration is issued to preserve a party’s claim of common-law rights in the mark.

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When can one legally use the federal registration symbol ® with the Mark?

Once a trademark is registered in the United States Patent & Trademark Office the federal registration symbol ® (often referred to as the circle R or the trademark symbol) may be used in conjunction with the sale of a product or service. The registration symbol may not be used while the application is pending or at any time before the mark is registered.

The trademark registration symbol should only be used on goods or services subject of a U.S. federal trademark registration. However if a manufacturer has registered a trademark in a foreign country and the foreign country allows the use of the trademark symbol ®, it may be used in the U.S. even though the mark has not been registered in the United States.

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What constitutes interstate commerce?

In order to register a federal trademark there must be transportation of the goods across state lines (interstate commerce) with the mark displayed on the goods or their packaging. Trademark registration is regulated by the federal government per the U.S. Constitution’s commerce clause which allows federal regulation of a state’s interstate commerce.

In order to register service marks there must be a rendering of a service to those in another state, or a rendering of a service which affects interstate commerce (e.g. restaurants, hotels, etc.).

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

At PatentHome we provide comprehensive trademark search services. It is extremely important to know whether someone else has already registered your mark, or if your mark is similarly confusing to a registered trademark and thus will likely be rejected. A comprehensive search entails more than searching for the actual mark, as one must also look for confusingly similar marks which may include phonetic and design equivalents.

Our legal experts will perform a comprehensive trademark search for you, right now.

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Is a federal trademark registration valid outside the United States?

Trademarks, like patents, can be legally enforced within the country of registration. However any owner of a pending U.S. trademark application or registration may seek registration in any one of the member countries to the Madrid Protocol. This is done through the USPTO by filing a single application (called an “international application”) with the International Bureau of the World Property Intellectual Organization.

PatentHome’s attorneys can file an international application anywhere in the world for you, right now.

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Can the United States Patent & Trademark Office conduct a trademark search for an applicant?

No. Once an application is filed the U.S. Patent & Trademark Office (USPTO) will conduct a records search as part of their official examination process. This search is not done on behalf of the applicant, but rather to determine whether the mark can be registered.

This is another reason why it’s smart to hire PatentHome to perform a trademark search prior to filing your application. Sound legal advice is needed before a TM application is filed as there are many issues to be resolved, including:

  • Is the mark available?
  • How should the mark be used on goods prior to application?
  • How should the mark be used in advertisements prior to filing the application?

PatentHome will answer these questions and help you avoid the legal pitfalls associated with filing a trademark application.

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What are “common law” rights?

“Common law” trademark rights arise from actual use of a mark. Generally the first to use a mark in commerce, or file an “intent to use” application with the Patent & Trademark Office, has the exclusive right to use the trademark in commerce. Common law rights are established and interpreted by the courts. Statutory rights are gained from a federal trademark registration and are created by legislation as defined through rules and laws.

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What is a “common law” search? How can I do one? Is it necessary?

A common law search involves searching records other than the federal register and pending application records. It may involve checking phone directories, industrial directories, state trademark registers, etc., to determine if a particular mark (not the subject of a federal trademark registration application) is used by others. Since the USPTO only searches registered trademarks to determine whether to grant a trademark registration, a common law search may not preclude registration. However it may uncover potential opposition to your application.

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What’s the difference between patent, trademark, and copyright protection?

Patents protect inventions and improvements to existing inventions.

Copyrights protect literary, artistic, and musical works.

Trademark registration protects company or brand names, slogans or logos, and/or designs which are applied to products or used in connection with the advertisement of services.

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Who may file an application for trademark registration?

Only a trademark owner may file an application for its registration. An application filed by a non-owner will be declared void. Generally the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is deemed the owner of the mark.

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What is a specimen of use?

A “specimen of use” is an example of how the mark is actually used on the goods or with an offer of services. Labels, tags, or containers for the goods are considered to be acceptable “specimens of use”. For a service mark, valid specimens may consist of specific advertising, such as magazine advertisements or brochures.

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What’s the “drawing” required to be submitted in a trademark application?

A trademark registration applicant must deposit a “drawing” of the Mark. The drawing must show the mark as it’s actually used in an advertisement, or as the applicant intends to use it in an advertisement, depending on the type of application filed. Drawings must be in black and white and without shading. Each U.S. trademark application can only pertain to a single mark.

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Is a drawing required if an applicant submits a specimen

Yes, a drawing of the mark is required in all applications. The drawing is used by the U.S. Patent & Trademark office for printing the mark in the Official Gazette, on the USPTO webpage depicting the mark, and on the registration certificate. A “specimen of use” is an example of how the mark is actually used in commerce, such as a label, tag or printing on a package.

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If one files an Intent-to-Use application, when is it necessary to allege actual use of the mark in commerce?

An applicant must allege use (by filing a “Statement of Use”) within 6 months from the issuance of the Notice of Allowance, unless the applicant requests and is granted an extension. The application will be declared abandoned if the applicant fails to file either an Amendment to Allege Use or a Statement of Use within the prescribed time.

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When can a foreign applicant file a U.S. application for registration?

A foreign applicant can file a U.S. trademark application under any of the following conditions:

  • the mark is or will be used in interstate commerce or in commerce between the U.S. and a foreign country;
  • the applicant has a bona fide or good faith intent to use the mark in interstate commerce or in commerce between the U.S. and a foreign country;
  • the applicant owns a filed application in a foreign country (within 6 months of the foreign filing date);
  • the applicant owns a foreign registration (with a copy); or
  • the applicant has received an extension of protection of an international registration to the United States under the Madrid Protocol.

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What are some reasons why the U.S. Patent and Trademark Office will refuse to register a mark?

A trademark functions as a source indicator and the USPTO will refuse to register a proposed trademark if it does not function as a trademark. Names, symbols, or devices which are the generic name of the goods on which they are used, cannot be registered.

Section 2 of the Trademark Act (15 USC§1052) contains several of the most common (though not the only) grounds for refusing registration, such as wherein the Mark:

  • consists of or comprises immoral, deceptive, or scandalous matter;
  • disparages or falsely suggests a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
  • 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;
  • consists of or comprises a name, portrait, or signature identifying a particular living individual, except by that individual’s written consent; or the name, signature, or portrait of a deceased U.S. President, during the life of his widow, if any, except by the widow’s written consent;
  • so closely resembles a mark already registered in the U.S. Patent and Trademark Office, use of the mark on applicant’s goods or services is likely to cause confusion, mistake, or deception (usually referred to as the likelihood of confusion refusal);
  • is merely descriptive or deceptively misdescriptive of the applicant’s goods or services;
  • is primarily geographically descriptive or deceptively geographically misdescriptive of the applicant’s goods or services;
  • is primarily a surname; or
  • is matter that, as a whole, is functional.

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Can I get a refund from the U.S. Patent and Trademark Office?

Once money is paid to the USPTO it is almost never refunded. One possible exception is if money was paid by mistake or in excess of the required amount. If an application is denied a filing date because the application is defective, the filing fee will be returned. A filing fee will normally not be returned if the application receives a filing date. The lesson to be learned is to file the trademark application correctly the first time using a legal expert at PatentHome.

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How can I check on the status of a pending US trademark application?

The status of a US trademark application can be checked in the Trademark Applications & Registrations Retrieval (TARR) database on the Office’s World Wide Web site by citing the application’s serial number. The trademark applicant can also call the Trademark Assistance Center at 1-800-786-9199 to request a status check. Since a trademark examiner usually gives an applicant 6 months to respond to an office action, it is wise for applicants to check the status at least every 6 months.

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How long does it take for a mark to be registered?

An applicant will receive a filing receipt and a serial number at the time of electronically filing the trademark application. Applicants usually receive a response from the USPTO within 4 or 5 months from the filing date. An application’s total process time depends on the basis for the filing and the legal issues which arise during its examination. Normally the entire application process can be completed in less than a year.

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When does a trademark registration expire?

Trademarks can remain registered for as long as the maintenance fees and a valid “statement of use” are timely filed with the trademark office. An Affidavit of Use (“Section 8 Affidavit”) must be filed between the 5th and 6th year following registration, and within the year before the end of every ten-year period after the date of registration. The registrant may file (additional fee) the affidavit within a six month grace period at the end of the 6th or 10th year.

The trademark registrant must also file (additional fee) a §9 Renewal Application within the year before the end of every ten-year period after the date of registration, or within a 6 month grace period after the expiration date.

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What is the Trademark Electronic Application System (TEAS)?

The Trademark Electronic Application System is the USPTO interface through which TM applications are filed online. TEAS is also used to file all trademark communications with the USPTO such as:

  • a response to an examining attorney’s Office action;
  • notice of change of address;
  • amendment to allege use;
  • statement of use;
  • request for extension of time to file a statement of use;
  • affidavit of continued use (15 USC §1058);
  • affidavit of incontestability (15 USC §1065);
  • combined statement of use and incontestability affidavit filed between the 5th & 6th yrs. after registration–commonly called an “8 & 15 affidavit” (15 USC §§1058 & 1065); or
  • a combined renewal and statement of use filing, filed between the 9th and 10th years after registration–commonly called an “8 and 9 affidavit” (15 USC §§1058 and 1059).

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What can I do if someone else uses a trademark similar to mine?

Trademark use is regulated and enforced through a lawsuit in the state and federal courts or in an “Opposition” proceeding before the Trademark Trial 7 Appeals Board. A trademark owner can sue for trademark infringement in state and federal courts (15 USC §§1114 & 1125).

Anyone who believes their trademark rights would be harmed by the registration of a trademark can initiate an Opposition to the registration. An Opposition proceeding is an administrative process and is essentially a paper trial before the USPTO’s Trademark Trial & Appeal Board (TTAB) judges (governed by the Trademark Trial & Appeal Board Manual of Procedure). The opposing party usually alleges that it uses, has registered, and/or has applied for a trademark which is confusingly similar to that of a trademark in a pending application.

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What constitutes trademark infringement?

Trademark usage in connection with the sale of a good constitutes infringement if it is likely to cause consumer confusion as to the source of those goods. The standard test is “likelihood of confusion.” In deciding whether consumers are likely to be confused, the courts consider the following “Polaroid factors” (Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492):

  • strength of the mark;
  • proximity of the goods;
  • similarity of the marks;
  • evidence of actual confusion;
  • similarity of marketing channels used;
  • degree of caution exercised by the typical purchaser; and
  • the defendant’s intent.

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What is a PTDL (Patent and Trademark Depository Library)?

A Patent & Trademark Depository Library (PTDL) is a library designated by the U.S. Patent & Trademark Office to receive and house copies of U.S. patents and patent & trademark materials, so as to make them available to the public and to disseminate patent and trademark information.

Patents and trademarks (word marks only) may be searched at the PTDLs. The Patent & Trademark Depository Librarians will provide you with the information you need to get started, but cannot give any legal advice and cannot perform a TM search for an applicant.

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Can the name of a band function as a trademark?

Yes, any name may function as a service mark if it is used to identify and distinguish the service of providing musical performances, or as a trademark for a series of musical recordings.

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Can a minor file a trademark application?

If a minor can legally enter into binding legal obligations in the state where the applicant is a resident, then that minor may file a trademark application. Otherwise a parent or legal guardian must sign the application on the minor’s behalf.

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Can trademark ownership be assigned or transferred?

A registered mark is transferable like any other property right. Once an application to register has been filed it is assignable. Written assignments may be recorded in the USPTO for a fee.

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My deceased spouse owned a trademark registration. Do I own it now?

Transfer of any property depends on state law.

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What are the classes of goods and services listed by the USPTO?

 

CLASS 1 (Chemicals)

Class 1 encompasses chemicals used in industry, science, photography, agriculture, horticulture & forestry; unprocessed artificial resins, unprocessed plastics, manures, fire extinguishing compositions, tempering & soldering preparations, chemical substances to preserve foodstuffs, tanning substances, and industrial adhesives.

Explanatory Note: Class 1 includes mainly chemical products used in industry, science and agriculture, including those which relate to the making of products belonging to other classes. This class also contains, in particular: compost and salt to preserve non foodstuffs.

This class does not include, in particular:

  • raw natural resins (Cl. 2);
  • chemical products for medical science use (Cl. 5);
  • fungicides, herbicides, and preparations for destroying vermin (Cl. 5);
  • household & stationery adhesives (Cl. 16);
  • salt to preserve foodstuffs (Cl. 30); and
  • straw mulch (Cl. 31).

 

CLASS 2 (Paints)

Class 2 involves paints, varnishes, lacquers, preservatives against rust & wood deterioration, colorants, mordants, raw natural resins, and metals in foil & powder form for painters, decorators, printers & artists. This class contains mainly paints, colorants, and preparations used to protect against corrosion, in particular:

  • paints, varnishes & lacquers for industry, handicrafts and arts;
  • clothing dyes; and
  • food & beverage colorants.

This class does not include, in particular:

  • unprocessed artificial resins (Cl. 1);
  • laundry blueing substances (Cl. 3);
  • cosmetic dyes (Cl. 3);
  • paint boxes (articles for school use) (Cl. 16); and
  • insulating paints & varnishes (Cl. 17).

 

CLASS 3 (Cosmetics and cleaning preparations)

Class 3 encompasses bleaching preparations & other substances for laundry use; cleaning, polishing, scouring & abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, and dentifrices. It includes mainly cleaning & toilet preparations, in particular: personal use deodorants & sanitary preparations (toiletries).

This class does not include, in particular:

  • chemical chimney cleaners (Cl. 1);
  • degreasing preparations for manufacturing processes (Cl. 1); and
  • sharpening stones & grindstones (hand tools) (Cl. 8).

 

CLASS 4 (Lubricants and fuels)

Class 4 contains industrial oils and greases, lubricants, dust absorbing, wetting & binding compositions; fuels (including motor spirit), illuminants, and candles & wicks (lighting). It includes mainly industrial oils & greases, fuels, and illuminants.

This class does not include, in particular: special industrial oils & greases (consult the Alphabetical List of Goods).

 

CLASS 5 (Pharmaceuticals)

Class 5 covers pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, baby food, plasters, materials for dressings, materials for cleaning teeth, dental wax, disinfectants, preparations to destroy vermin; fungicides, and herbicides. Class 5 includes mainly pharmaceuticals and other preparations for medical purposes, in particular:

  • personal hygiene sanitary preparations (other than toiletries);
  • personal use deodorants; and
  • tobacco-less cigarettes for medical purposes.
  • his class does not include, in particular:
  • sanitary preparations (toiletries) (Cl. 3); and
  • supportive bandages (Cl. 10).

 

CLASS 6 (Metal goods)

Class 6 encompasses common metals (& their alloys), metal building materials, transportable metal buildings, metal materials for railway tracks, non-electric cables & wires of common metal, ironmongery, small metal hardware, metal pipes & tubes, safes, goods of common metal not included in other classes, and ores. Class 6 includes mainly unwrought and partly wrought common metals, and simple products made from them.

This class does not include, in particular:

  • bauxite (Cl. 1);
  • mercury, antimony, alkaline & alkaline-earth metals (Cl. 1); and
  • metals in foil and powder form for painters, decorators, printers & artists (Cl. 2).

 

CLASS 7 (Machinery)

Class 7 involves machines & machine tools, non-land vehicle motors, engines, machines, coupling & transmission components, non hand-operated agricultural implements, and egg incubators. Class 7 includes mainly machines, machine tools, motors & engines, in particular:

  • motor & engine parts (of all kinds); and
  • electric cleaning machines & apparatus.

This Class does not include, in particular:

  • special machines & machine tools (consult the Alphabetical List of Goods);
  • hand tools & implements (Cl. 8); and
  • land vehicle motors & engines (Cl. 12).

 

CLASS 8 (Hand tools)

Class 8 contains hand tools & implements (hand-operated), cutlery, side arms and razors. This class includes mainly hand-operated implements used as tools, in particular:

  • precious metal cutlery; and
  • electric razors & clippers (hand instruments).
  • is class does not include, in particular:
  • special instruments (consult the Alphabetical List of Goods);
  • motorized machine tools & implements (Cl. 7);
  • surgical cutlery (Cl. 10);
  • paper knives (Cl. 16); and
  • fencing weapons (Cl. 28).

 

CLASS 9 (Electrical and scientific apparatus)

Class 9 consists of:

  • scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving, and teaching apparatus /instruments;
  • apparatus/instruments to conduct, switch, transform, accumulate, regulate, or control electricity;
  • apparatus/instruments to record, transmit, or reproduce sound or images; magnetic data carriers, & recording discs;
  • automatic vending machines & mechanisms for coin-operated apparatus;
  • cash registers;
  • calculating machines, data processing equipment & computers; and
  • fire-extinguishing apparatus.

This class includes, in particular:

  • scientific laboratory research instruments;
  • instruments to control ships (e.g., to measure, and to transmit orders);
  • electro-thermal tools such as electric soldering & flat irons which, if not electric, belong to Class 8; and devices which, if not electrical, are listed elsewhere (such as electrically heated clothing & automobile lighters);
  • protractors;
  • punch card office machines;
  • amusement apparatus adapted for use with an external display screen/monitor; and
  • all computer programs & software regardless of recording media or means of dissemination, i.e., software recorded on magnetic media or downloaded from a remote computer network.

This class does not include, in particular:

  • kitchen electromechanical apparatus (food grinders & mixers, fruit presses, electrical coffee mills, etc.), and other motorized apparatus and instruments, all listed under Class 7;
  • electric razors and clippers (hand instruments) (Cl. 8);
  • electric toothbrushes and combs (Cl. 21);
  • space heating electrical apparatus or electrical instruments to heat liquids for cooking, ventilating, etc. (Cl. 11);
  • clocks, watches and other chronometric instruments (Cl. 14); and
  • control clocks (Cl. 14).

 

CLASS 10 (Medical apparatus)

Class 10 encompasses surgical, medical, dental and veterinary apparatus/instruments; artificial limbs, eyes & teeth; orthopedic articles, and suture materials. This class includes mainly medical apparatus, instruments and articles, in particular:

  • furniture for medical use;
  • hygienic rubber articles (consult the Alphabetical List of Goods); and
  • supportive bandages.

 

CLASS 11 (Environmental control apparatus)

Class 11 contains apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, and in particular:

  • air conditioning apparatus;
  • bed-warmers, hot water bottles, warming pans (electric or non-electric);
  • electrically heated cushions (pads) & blankets, not for medical purposes;
  • electric kettles; and
  • electric cooking utensils.

This class does not include, in particular:

  • steam producing apparatus (machine parts) (Cl. 7); and
  • electrically heated clothing (Cl. 9).

 

CLASS 12 (Vehicles)

Class 12 contains vehicles, and apparatus for locomotion by land, air or water, and in particular:

  • land vehicle motors, engines, couplings & transmission parts; and
  • air cushion vehicles.

This class does not include, in particular:

  • certain vehicle parts (consult the Alphabetical List of Goods);
  • metal railway material (Cl. 6);
  • non land vehicle motors, engines, couplings & transmission parts (Cl. 7); and
  • all types of motor & engine parts (Cl. 7).

 

CLASS 13 (Firearms)

Class 13 encompasses firearms, ammunition, projectiles, explosives, and fireworks. It includes mainly firearms and pyrotechnical products.

This class does not include matches (Cl. 34).

 

CLASS 14 (Jewelry)

Class 14 consists of precious metals (& their alloys and goods in precious metals or coated therewith not included in other classes), jewelry, precious stones, and horological & chronometric instruments. This class includes mainly precious metals, goods in precious metals not included in other classes and, in general jewelry, clocks & watches, in particular:

  • jewelry (i.e., imitation jewelry & jewelry from precious metal and stones); and
  • cuff links & tie pins.

This class does not include, in particular:

  • goods in precious metals classified as to their function or purpose such as: metals in foil and powder form for painters, decorators, printers and artists (Cl. 2);
  • amalgam of gold for dentists (Cl. 5);
  • cutlery (Cl. 8);
  • electric contacts (Cl. 9);
  • pen nibs of gold (Cl. 16);
  • teapots (Cl. 21);
  • gold & silver embroidery (Cl. 26);
  • cigar boxes (Cl. 34); and
  • non precious metal art objects (classified as to their material).

 

CLASS 15 (Musical Instruments)

Class 15 encompasses musical instruments, including in particular:

  • mechanical pianos & their accessories;
  • musical boxes; and
  • electrical & electronic musical instruments.

This class does not include: apparatus to record, transmit, amplify and reproduce sound (Cl. 9).

 

CLASS 16 (Paper goods and printed matter)

Class 16 involves paper, cardboard, and goods made from these materials not included in other classes; printed matter, bookbinding material, photographs, stationery, stationery or household adhesives, artists’ materials, paint brushes, typewriters & office requisites (except furniture), instructional & teaching material (except apparatus), plastic packaging materials not included in other classes, printers’ type, and printing blocks. This class encompasses mainly paper, goods made from paper, and office requisites, including:

  • paper knives;
  • duplicators; and
  • plastic sheets and sacks & bags for wrapping/packaging.

This class does not include, in particular:

  • certain paper & cardboard goods (consult the Alphabetical List of Goods);
  • colours (Cl. 2); and
  • hand tools for artists, such as spatulas & sculptors’ chisels (Cl. 8).

 

CLASS 17 (Rubber goods)

Class 17 contains rubber, gutta-percha, gum, asbestos, mica, and goods made from these materials not included in other classes; plastics in extruded form for use in manufacture; packing, stopping & insulating materials, and non metal flexible pipes. This class includes mainly electrical, thermal & acoustic insulating materials and plastics, used in manufacturing in the form of sheets, blocks and rods, in particular:

  • rubber material to recap tires;
  • rubber and plastic padding & stuffing materials; and
  • floating anti-pollution barriers.

 

CLASS 18 (Leather goods)

Class 18 involves leather, its imitations, and goods made of these materials not included in other classes; animal skins, hides, trunks & travelling bags, umbrellas, parasols, walking sticks, whips, harnesses, and saddlery. This class includes mainly leather, leather imitations, travel goods not included in other classes, and saddlery.

This class does not include: clothing, footwear & headgear (see the Alphabetical List of Goods).

 

CLASS 19 (Nonmetallic building materials)

Class 19 encompasses non metallic building materials, non-metallic rigid pipes for building, asphalt, pitch, bitumen, non-metallic transportable buildings, and non metal monuments. This class includes mainly non-metallic building materials, in particular:

  • semi-worked woods (such as beams, planks, panels);
  • veneers;
  • building glass (e.g., floor slabs & glass tiles);
  • glass granules to mark out roads; and
  • masonry letter boxes.

This class does not include, in particular:

  • cement preservatives, cement-waterproofing preparations (Cl. 1); and
  • fireproofing preparations (Cl. 1).

 

CLASS 20 (Furniture and articles not otherwise classified)

Class 20 pertains to furniture, mirrors, picture frames; goods not included in other classes of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum (& their substitutes), and plastics. This class includes mainly furniture (and parts), and plastic goods not included in other classes, in particular:

  • metal furniture & furniture for camping;
  • bedding (such as mattresses, spring mattresses, & pillows);
  • looking glasses and furnishing or toilet mirrors;
  • non metal registration number plates; and
  • letter boxes not of metal or masonry.

This class does not include, in particular:

  • special mirrors classified as to their function or purpose (see the Alphabetical List of Goods);
  • special laboratory furniture (Cl. 9);
  • special medical furniture (Cl. 10);
  • bedding linen (Cl. 24); and
  • eiderdowns (Cl. 24).

 

CLASS 21 (House-wares and glass)

Class 21 involves household/kitchen utensils & containers, combs & sponges, brushes (except paint brushes), brush-making materials, cleaning articles, steel-wool, un-worked or semi-worked glass (except glass used in building); and glassware, porcelain, & earthenware not included in other classes. This class includes mainly small, hand-operated utensils/apparatus for household & kitchen use, toilet utensils, glassware, and porcelain articles, and in particular:

  • kitchen/household utensils & containers such as pails, pans, small hand-operated apparatus for mincing, grinding, pressing, etc.;
  • electric combs& toothbrushes; and
  • dish & decanter stands.

This class does not include, in particular:

  • certain glass, porcelain & earthenware goods (see the Alphabetical List of Goods);
  • cleaning preparations, soaps, etc. (Cl. 3);
  • small electrical apparatus for mincing, grinding, pressing, etc., (Cl. 7);
  • razors & shaving apparatus, clippers (hand instruments), metal implements, and manicure/pedicure utensils (Cl. 8);
  • electric cooking utensils (Cl. 11); and
  • toilet mirrors (Cl. 20).

 

CLASS 22 (Cordage and fibers)

Class 22 pertains to ropes, string, nets, tents, awnings, tarpaulins, sails, and sacks & bags not listed in other classes; non rubber/plastic padding & stuffing materials and raw fibrous textile materials. This class includes mainly rope & sail manufacture products, padding & stuffing materials, and raw fibrous textile materials, in particular: cords and twines in natural or artificial textile fibers, paper or plastics.

This class does not include, in particular:

  • certain nets, sacks and bags (consult the Alphabetical List of Goods); and
  • strings for musical instruments (Cl. 15).

 

CLASS 23 (Yarns and threads)

Class 23 pertains to textile yarns and threads.

 

CLASS 24 (Fabrics)

Class 24 involves textiles & textile goods not included in other classes, and bed & table covers. It includes mainly textiles (piece goods) and household textile covers, e.g., paper bedding linen.

This class does not include, in particular:

  • special textiles (consult the Alphabetical List of Goods);
  • electrically heated blankets;
  • paper table linen (Cl. 16); and
  • horse blankets (Cl. 18).

 

CLASS 25 (Clothing)

Class 25 encompasses clothing, footwear, and headgear. This class does not include, in particular: certain special use clothing & footwear (consult the Alphabetical List of Goods).

 

CLASS 26 (Fancy goods)

Class 26 involves lace, embroidery, ribbons & braid, buttons, hooks & eyes, pins & needles, and artificial flowers. This class includes mainly dressmakers’ articles, such as slide fasteners.

This class does not include, in particular:

  • special hooks (consult the Alphabetical List of Goods);
  • special needles (consult the Alphabetical List of Goods);
  • textile yarns & threads (Cl. 23).

 

CLASS 27 (Floor coverings)

Class 27 covers carpets, rugs, mats & matting, linoleum & other materials to cover existing floors, and non-textile wall hangings. It includes mainly products intended as furnishings to previously constructed floors & walls, but does not include wooden flooring (Cl. 19).

 

CLASS 28 (Toys and sporting goods)

Class 28 involves games & playthings, gymnastic & sporting articles not included in other classes, and Christmas tree decorations, and includes:

  • fishing tackle; and
  • sports & games equipment.

This class does not include, in particular:

  • Christmas tree candles (Cl. 4);
  • diving equipment (Cl. 9);
  • amusement apparatus adapted for use w/ an external display screen/monitor (Cl. 9);
  • Christmas tree electrical lamps (garlands) (Cl. 11);
  • fishing nets (Cl. 22);
  • gymnastic & sports clothing (Cl. 25); and
  • confectionery & chocolate Christmas tree decorations (Cl. 30).

 

CLASS 29 (Meats and processed foods)

Class 29 involves meat, fish, poultry & game, meat extracts; preserved, frozen, dried & cooked fruits/vegetables, jellies, jams & compotes; eggs, milk & milk products, and edible oils & fats. This class includes mainly foodstuffs of animal origin, vegetables, and other horticultural comestible products prepared for consumption or conservation, e.g., milk (predominating) beverages.

This class does not include, in particular:

  • certain foodstuffs of plant origin (consult the Alphabetical List of Goods);
  • baby food (Cl. 5);
  • dietetic substances adapted for medical use (Cl. 5);
  • salad dressings (Cl. 30);
  • fertilized eggs for hatching (Cl. 31);
  • foodstuffs for animals (Cl. 31); and
  • live animals (Cl. 31).

 

CLASS 30 (Staple foods)

Class 30 pertains to coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour & preparations made from cereals; bread, pastry, confectionery ices, honey, treacle; yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, and ice. This class includes mainly foodstuffs of plant origin prepared for consumption or conservation as well as auxiliaries intended to improve food flavor, such as:

  • beverages with a coffee, cocoa or chocolate base;
  • cereals prepared for human consumption (such as oat, wheat & bran flakes).

This class does not include, in particular:

  • certain foodstuffs of plant origin (consult the Alphabetical List of Goods);
  • salt to preserve non foodstuffs (Cl. 1);
  • teas & dietetic substances adapted for medical use (Cl. 5);
  • baby food (Cl. 5);
  • raw cereals (Cl. 31); and
  • foodstuffs for animals (Cl. 31).

 

CLASS 31 (Natural agricultural products)

Class 31 encompasses agricultural, horticultural, & forestry products/grains not included in other classes; live animals, fresh fruits & vegetables, seeds, natural plants & flowers, foodstuffs for animals, and malt. This class includes mainly land products not having been subjected to any form of preparation for consumption; live animals, plants & foodstuffs for animals, in particular:

  • raw woods & cereals;
  • fertilized eggs for hatching;
  • live mollusca & crustacea.

This class does not include, in particular:

  • cultures of micro-organisms & leeches for medical purposes (Cl. 5);
  • semi-worked woods (Cl. 19);
  • artificial fishing bait (Cl. 28);
  • rice (Cl. 30); and
  • tobacco (Cl. 34).

 

CLASS 32 (Light beverages)

Class 32 pertains to beers; mineral & aerated waters, other non-alcoholic drinks; fruit drinks & juices, syrups, and other preparations for making beverages. This class includes mainly non-alcoholic beverages (& beer), in particular: de-alcoholised drinks.

This class does not include, in particular:

  • beverages for medical purposes (Cl. 5);
  • milk beverages (milk predominating) (Cl. 29); and
  • beverages with a coffee, cocoa or chocolate base (Cl. 30).

 

CLASS 33 (Wine and spirits)

Class 33 encompasses alcoholic beverages, except beers. This class does not include, in particular:

  • medicinal drinks (Cl. 5); and
  • de-alcoholised drinks (Cl. 32).

 

CLASS 34 (Smokers’ articles)

Class 34 relates to tobacco, smokers’ articles, and matches, and includes tobacco substitutes (not for medical purposes).

This class does not include tobacco-less cigarettes for medical purposes (Cl. 5);

 

CLASS 35 (Advertising and business)

Class 35 involves advertising, business management & administration, and office functions. This class includes mainly services rendered by persons/organizations principally concerned with:

  • assistance to the working or management of a commercial undertaking; or
  • help for the management of the business affairs or commercial functions of an industrial or commercial enterprise;
  • or for services rendered by advertising entities primarily undertaking public communications, declarations or announcements by all means of diffusion and concerning all kinds of goods or services.

This class includes services for:

  • the bringing together for the benefit of others a variety of goods (excluding the transport thereof), which enables customers to conveniently view & purchase those goods [such services may be provided by retail or wholesale outlets, through mail order catalogues or by means of electronic (web site or television) media];
  • the registration, systemization, transcription, or composition/compilation of written communications & registrations;
  • the compilation of mathematical or statistical data; and
  • advertising agency services such as the distribution of prospectuses or samples; and for advertising other services, such as bank loans or radio advertisements.

This class does not include, in particular:

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

 

CLASS 36 (Insurance and financial)

Class 36 encompasses insurance, financial, monetary & real estate affairs.

This class includes mainly financial & monetary services rendered in relation to all types of insurance contracts, in particular:

  • banking and related services such as by exchange brokers or clearing services;
  • credit services other than banks such as co-operative credit associations, individual financial companies, lenders, etc.;
  • “investment trust” services from holding companies;
  • broker services dealing in shares & property;
  • monetary services vouched for by trustees;
  • services related to the issue of traveler checks & letters of credit;
  • services of realty administrators of buildings, i.e., services of letting, valuation, or financing; and
  • insurance services rendered by agents or brokers, and insurance underwriting services.

 

CLASS 37 (Building construction and repair)

Class 37 involves building construction, repair, and installation services. This class includes mainly services rendered by contractors or subcontractors in the construction of permanent buildings, as well as services rendered by persons/organizations restoring objects to their original condition, or preserving objects without altering their physical/chemical properties, in particular:

  • construction of buildings, roads, bridges, dams or transmission lines, and related specialized fields such as those of painters, plumbers, heating installers or roofers;
  • auxiliary construction services such as inspections of construction plans;
  • shipbuilding;
  • services for hiring tools or building materials;
  • repair services, i.e., returning an object to good condition after wear, damage, deterioration or partial destruction (restoration of an existing building or another object that has become imperfect and is to be restored to its original condition);
  • repair services such as those in the fields of electricity, furniture, tools, etc.; and
  • maintenance services to preserve an object in its original condition without changing any of its properties (for the difference between this Class and Class 40, see the explanatory note to Class 40).

This class does not include, in particular:

  • services to store goods such as clothes or vehicles (Cl. 39); and
  • services related to the dyeing of cloth or clothes (Cl. 40).

 

CLASS 38 (Telecommunications)

Class 38 encompasses telecommunications and mainly includes services allowing at least one person to communicate with another by a sensory means, such as services which:

  • allow one person to talk to another;
  • transmit messages from one person to another; and
  • place a person in oral or visual communication with another (radio and television).

This class also includes services which essentially diffuse radio or television programs, but does not include radio advertising services (Cl. 35).

 

CLASS 39 (Transportation and storage)

Class 39 involves transport, the packaging & storage of goods, and travel arrangement. This class mainly includes services rendered to transport people or goods (by rail, road, water, air or pipeline), services necessarily connected with such transport, and services related to the storage of goods in a warehouse or other building for their preservation or guarding.

This class also includes the following services related to:

  • the upkeep of stations, bridges, rail-road ferries, etc., used by the transporter;
  • hiring transport vehicles;
  • maritime tugs, dock unloading, the functioning of ports & docks;
  • the salvage of wrecked ships & their cargoes;
  • the functioning of airports;
  • the packaging & parceling of goods before dispatch;
  • information about journeys or the transport of goods by brokers & tourist agencies;
  • tariffs, timetables & methods of transport; and
  • the inspection of vehicles or goods before transport.

This class does not include, in particular, the following services related to the:

  • advertising of transport undertakings such as the distribution of prospectuses or radio advertisement (Cl. 35);
  • issuance of traveler checks or letters of credit by brokers or travel agents (Cl. 36);
  • insurances (commercial, fire or life) during the transport of persons/goods (Cl. 36);
  • maintenance & repair of vehicles, or the maintenance or repair of objects connected with the transport of persons or goods (Cl. 37); and
  • reservation of hotel rooms by travel agents or brokers (Cl. 43).

 

CLASS 40 (Treatment of materials)

Class 40 pertains to the treatment of materials and mainly includes services (not included in other classes) related to the mechanical or chemical processing/transformation of objects or substances.

For classification purposes, the mark is considered a service mark only in cases when the processing or transformation is affected for the account of another person. A mark is considered a trade mark in all cases where the substance or object is marketed by the person who processed or transformed it. Some representative services are:

  • transformation of an object or substance, and any process involving a change in its essential properties (e.g., dyeing a garment), [thus a maintenance service, though usually listed in Class 37, is included in Class 40 if it entails such a change (for example, the chroming of motor vehicle bumpers)]; and
  • material treatment which may be present during the production of any substance or object other than a building, e.g., the cutting, shaping, or polishing by abrasion or metal coating.

This class does not include repair services (Cl. 37).

 

CLASS 41 (Education and entertainment)

Class 41 covers education, training, entertainment, and sporting & cultural activities. This class mainly includes services rendered to develop the mental faculties of persons or animals, and to entertain or to engage one’s attention, in particular:

  • all forms of education of persons or animal training;
  • the entertainment, amusement, or recreation of people; and
  • the public presentation of visual art or literature for cultural/educational purposes.

 

CLASS 42 (Computer and scientific)

Class 42 covers scientific & technological services, and their related research & design; industrial analysis & research services, and design & development of computer hardware & software. This class generally includes services as to the theoretical & practical aspects of complex fields (as provided by members of professions such as chemists, physicists, engineers, computer programmers, etc.), and in particular:

  • engineering evaluations, research & reports in scientific & technological fields; and
  • scientific research services for medical purposes.

This class does not include, in particular:

  • business research & evaluations (Cl. 35);
  • word processing & computer file management services (Cl. 35);
  • financial & fiscal evaluations (Cl. 36);
  • mining & oil extraction (Cl. 37);
  • computer (hardware) installation & repair services (Cl. 37);
  • professional services provided by medical doctors, veterinary surgeons, psychoanalysts , etc.,(Cl. 44);
  • medical treatment services (Cl. 44);
  • garden design (Cl. 44); and
  • legal services (Cl. 45).

 

CLASS 43 (Hotels and restaurants)

Class 43 covers services providing food, drink, and temporary accommodation. This class mainly includes services to prepare food & drink for consumption, and bed/boarding services in hotels, boarding houses or other sites providing temporary accommodation, such as:

  • reservation services for travelers’ accommodation, particularly through travel agencies or brokers; and
  • boarding for animals.

This class does not include, in particular:

  • rental services for permanent use real estate such as houses, flats, etc., (Cl. 36);
  • travel arrangement by tourist agencies (Cl. 39);
  • preservation services for food & drink (Cl. 40);
  • discotheque services (Cl. 41);
  • boarding schools (Cl. 41); and
  • rest & convalescent homes (Cl. 44).

 

CLASS 44 (Medical, beauty & agricultural)

Class 44 refers to medical & veterinary services, hygienic & beauty care for humans or animals, and agriculture, horticulture & forestry services. This class generally includes medical care, hygienic & beauty care, and services related to agriculture, horticulture and forestry, such as:

  • medical analysis (such as x-ray examinations & blood sample withdrawals);
  • artificial insemination;
  • pharmacy advice;
  • animal breeding;
  • gardening (the growing of plants); and
  • floral art & garden design.

This class does not include, in particular:

  • vermin extermination (other than for agriculture, horticulture & forestry) (Cl. 37);
  • installation & repair of irrigation systems (Cl. 37);
  • ambulance transport (Cl. 39);
  • animal slaughtering & taxidermy (Cl. 40);
  • timber felling & processing (Cl. 40);
  • animal training (Cl. 41);
  • health clubs for physical exercise (Cl. 41);
  • scientific research for medical purposes (Cl. 42);
  • boarding for animals (Cl. 43); and
  • retirement homes (Cl. 43).

 

CLASS 45 (Personal)

Class 45 encompasses legal services, security services to protect property & people, and personal/social services rendered to meet the needs of others. This class includes, in particular:

  • services rendered by lawyers;
  • investigation & surveillance services for the safety of persons & entities;
  • services provided for social events, such as social escort services, matrimonial agencies, and funeral services.

This class does not include, in particular, the following services:

  • professional, direct aid to a commercial undertaking’s operations/functions (Cl. 35);
  • financial, monetary or insurance (Cl. 36);
  • escorting of travelers (Cl. 39);
  • security transport (Cl. 39);
  • all forms of education (Cl. 41);
  • singing & dancing performances (Cl. 41);
  • computer software protection (Cl. 42);
  • medical, hygienic or beauty care for humans or animals (Cl. 44); and
  • certain rental agencies (see the Alphabetical List of Services & General Remark (b) relating to the classification of services).

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