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Trademark Infringement Confusingly Similar

Use Caution When Creating A Company Logo to Avoid Trademark Infringement

Have you ever been to a store that has a logo awfully similar to its competitor? Perhaps you have seen an online shop with a logo oddly familiar to another company logo? I’ve seen this twice this week which brings me to publish this information. When two company logos are strikingly similar it is possible a trademark infringement has been committed. The following is some information the United States Patent & Trademark Office published:

What is trademark infringement?

Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.

What will happen if someone sues me for trademark infringement

A trademark owner who believes its mark is being infringed may file a civil action (i.e., lawsuit) in either state court or federal court for trademark infringement, depending on the circumstances. However, in most cases, trademark owners choose to sue for infringement in federal court. Even when a plaintiff chooses state court, it may be possible for the defendant to have the case “removed” to federal court.

If the trademark owner is able to prove infringement, available remedies may include the following:

  • a court order (injunction) that the defendant stop using the accused mark;
  • an order requiring the destruction or forfeiture of infringing articles;
  • monetary relief, including defendant’s profits, any damages sustained by the plaintiff, and the costs of the action; and
  • an order that the defendant, in certain cases, pay the plaintiffs’ attorneys’ fees.

Conversely, a court may find instead that (1) you are not infringing the trademark, (2) a defense bars the plaintiff’s claim(s), or (3) other reasons exist why the trademark owner is not entitled to prevail.

How do I know whether I’m infringing?

To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are “senior” to the defendant’s), and that the defendant’s mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. When a plaintiff owns a federal trademark registration on the Principal Register, there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in the court proceedings.

Courts have generally looked at the following eight factors to analyze whether a particular situation has developed the requisite “likelihood of confusion” :

  1. the similarity in the overall impression created by the two marks (including the marks’ look, phonetic similarities, and underlying meanings);
  2. the similarities of the goods and services involved (including an examination of the marketing channels for the goods);
  3. the strength of the plaintiff’s mark;
  4. any evidence of actual confusion by consumers;
  5. the intent of the defendant in adopting its mark;
  6. the physical proximity of the goods in the retail marketplace;
  7. the degree of care likely to be exercised by the consumer; and
  8. the likelihood of expansion of the product lines.

Learn More: http://www.uspto.gov/page/about-trademark-infringement

If you’re being sued for Trademark Infringement, speak with a knowledgeable attorney about this matter immediately.

Here is some information the USPTO publishes about this topic:

How does a trademark infringement lawsuit begin?

A trademark lawsuit begins when the trademark owner files a complaint with a court alleging trademark infringement. Among other things, the complaint names the parties involved and sets forth the allegations that form the basis of the lawsuit. Trademark owners who decide to sue may file their complaint in either state court or federal court, depending on the circumstances. However, in most cases, the trademark owner, as plaintiff, will choose federal court. Even when a plaintiff chooses state court, it may be possible for the defendant to have the case “removed” to federal court.

Frequently, either before or at the time a complaint is filed, the trademark owner or the owner’s attorney may send you a letter/email or otherwise contact you to make claims about the owner’s trademark rights and demand that you take certain actions, such as ceasing use of your mark.

Learn More About Being Sued For Trademark Infringement: http://www.uspto.gov/trademark/ive-been-sued

Read about a sample case involving trademark infringement: 7-Eleven Wins Trademark Infringement Suit vs. Super-7 Store

ryan_cruz_law_san_diego_attorney_intellectual_property_trademark_classification

Filing a trademark this year? The International Classification was updated 1/1/2016

A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services. To better understand how a trademark is different from a patent, copyright, domain name and business name, watch this short video published by the United States Trademark and Patent Office.

 

If you are interested in applying for trademark registration this year, note that the International Classification was updated and is effective as of January 1, 2016.   Bookmark or Favorite this page for future reference this year as you work on your application.  If you are preparing your own application, speak with an attorney before submitting your application. For certain parts of the application, an amendment cannot be submitted after filing the application, therefore, you are encouraged to seek a consultation about your trademarking needs before submission.   Here are other reasons to seek a consultation before submitting an application:

  • plans to seek trademark protection internationally
  • plans to use the trademark in commerce after submitting your application
  • a need to concisely describe your goods and/or services
  • learn which information becomes public record
  • apply for registration in the correct classification of goods and services

The following is the text released by the USPTO this year. Refer to the USPTO website for more information: 

International trademark classification, and the headings of the international trademark classes, are established by the Committee of Experts of the Nice Union and set forth in the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), published by the World Intellectual Property Organization (“WIPO”). The general remarks, class numbers, class headings, and explanatory notes for each international trademark class are as follows.

The International Classification is available at http://www.wipo.int/classifications/nice/en/ (link is external). However, because the international list was developed to classify goods and services and not to identify specific goods and services, most entries will not be sufficiently definite to use in an identification of goods and/or services.

On January 1, 2016, the Nice Classification, Tenth Edition, version 2016 (NCL 10-2016), became effective. Changes to the class headings are highlighted in the Noteworthy Changes to the Nice Classification System under the Nice Agreement, Tenth Edition, version 2016.  To see a comprehensive list of all the new or changed entries, on or after January 1, 2016, please search the legacy version of the USPTO ID Manual using the Search Term “20160101[ED]” or conduct an advanced search in the Next Generation ID Manual using the exact date (“=” sign in the “Effective Date” dropdown menu) of January 1, 2016.

General Remarks

The indications of goods or services appearing in the class headings are general indications relating to the fields to which, in principle, the goods or services belong. The Alphabetical List should therefore be consulted in order to ascertain the exact classification of each individual product or service.

GOODS

If a product cannot be classified with the aid of the List of Classes, the Explanatory Notes and the Alphabetical List, the following remarks set forth the criteria to be applied:

(a) A finished product is in principle classified according to its function or purpose. If the function or purpose of a finished product is not mentioned in any class heading, the finished product is classified by analogy with other comparable finished products, indicated in the Alphabetical List. If none is found, other subsidiary criteria, such as that of the material of which the product is made or its mode of operation, are applied.

(b) A finished product which is a multipurpose composite object (e.g., clocks incorporating radios) may be classified in all classes that correspond to any of its functions or intended purposes. If those functions or purposes are not mentioned in any class heading, other criteria, indicated under (a), above, are to be applied.

(c) Raw materials, unworked or semi-worked, are in principle classified according to the material of which they consist.

(d) Goods intended to form part of another product are in principle classified in the same class as that product only in cases where the same type of goods cannot normally be used for another purpose. In all other cases, the criterion indicated under (a), above, applies.

(e) When a product, whether finished or not, is classified according to the material of which it is made, and it is made of different materials, the product is in principle classified according to the material which predominates.

(f) Cases adapted to the product they are intended to contain are in principle classified in the same class as the product.

SERVICES

If a service cannot be classified with the aid of the List of Classes, the Explanatory Notes and the Alphabetical List, the following remarks set forth the criteria to be applied:

(a) Services are in principle classified according to the branches of activities specified in the headings of the service classes and in their Explanatory Notes or, if not specified, by analogy with other comparable services indicated in the Alphabetical List.

(b) Rental services are in principle classified in the same classes as the services provided by means of the rented objects (e.g., Rental of telephones, covered by Class 38). Leasing services are analogous to rental services and therefore should be classified in the same way. However, hire- or lease-purchase financing is classified in Class 36 as a financial service.

(c) Services that provide advice, information or consultation are in principle classified in the same classes as the services that correspond to the subject matter of the advice, information or consultation, e.g., transportation consultancy (Cl. 39), business management consultancy (Cl. 35), financial consultancy (Cl. 36), beauty consultancy (Cl. 44). The rendering of the advice, information or consultancy by electronic means (e.g., telephone, computer) does not affect the classification of these services.

(d) Services rendered in the framework of franchising are in principle classified in the same class as the particular services provided by the franchisor (e.g., business advice relating to franchising (Class 35), financing services relating to franchising (Class 36), legal services relating to franchising (Class 45)).

Class Headings with Explanatory Notes

CLASS 1

Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry;

unprocessed artificial resins, unprocessed plastics;

manures;

fire extinguishing compositions;

tempering and soldering preparations;

chemical substances for preserving foodstuffs;

tanning substances;

adhesives used in industry.

Explanatory Note

Class 1 includes mainly chemical products used in industry, science and agriculture, including those which go to the making of products belonging to other classes.

This Class includes, in particular:

–   compost;

–   salt for preserving other than for foodstuffs;

–   certain additives for the food industry (consult the Alphabetical List of Goods).

This Class does not include, in particular:

–   raw natural resins (Cl. 2);

–   chemical products for use in medical science (Cl. 5);

–   fungicides, herbicides and preparations for destroying vermin (Cl. 5);

–   adhesives for stationery or household purposes (Cl. 16);

–   salt for preserving foodstuffs (Cl. 30);

–   straw mulch (Cl. 31).

CLASS 2

Paints, varnishes, lacquers;

preservatives against rust and against deterioration of wood;

colorants;

mordants;

raw natural resins;

metals in foil and powder form for use in painting, decorating, printing and art.

Explanatory Note

Class 2 includes mainly paints, colorants and preparations used for the protection against corrosion.

This Class includes, in particular:

–   paints, varnishes and lacquers for industry, handicrafts and arts;

–   dyestuffs for clothing;

–   colorants for foodstuffs and beverages.

This Class does not include, in particular:

–   unprocessed artificial resins (Cl. 1);

–   laundry blueing (Cl. 3);

–   cosmetic dyes (Cl. 3);

–   paint boxes (articles for use in school) (Cl. 16);

–   insulating paints and varnishes (Cl. 17).

CLASS 3

Bleaching preparations and other substances for laundry use;

cleaning, polishing, scouring and abrasive preparations;

soaps;

perfumery, essential oils, cosmetics, hair lotions;

dentifrices.

Explanatory Note

Class 3 includes mainly cleaning preparations and toilet preparations.

This Class includes, in particular:

–   deodorants for human beings or for animals;

–   room fragrancing preparations;

–   sanitary preparations being toiletries.

This Class does not include, in particular:

–   chemical chimney cleaners (Cl. 1);

–   degreasing preparations for use in manufacturing processes (Cl. 1);

–   deodorants other than for human beings or for animals (Cl. 5);

–   sharpening stones and grindstones (hand tools) (Cl. 8).

CLASS 4

Industrial oils and greases;

lubricants;

dust absorbing, wetting and binding compositions;

fuels (including motor spirit) and illuminants;

candles and wicks for lighting.

Explanatory Note

Class 4 includes mainly industrial oils and greases, fuels and illuminants.

This Class does not include, in particular:

– certain special industrial oils and greases (consult the Alphabetical List of Goods).

CLASS 5

Pharmaceuticals, medical and veterinary preparations;

sanitary preparations for medical purposes;

dietetic food and substances adapted for medical or veterinary use, food for babies;

dietary supplements for humans and animals;

plasters, materials for dressings;

material for stopping teeth, dental wax;

disinfectants;

preparations for destroying vermin;

fungicides, herbicides.

Explanatory Note

Class 5 includes mainly pharmaceuticals and other preparations for medical or veterinary purposes.

This Class includes, in particular:

–   sanitary preparations for personal hygiene, other than toiletries;

–   diapers for babies and incontinents;

–   deodorants other than for human beings or for animals;

–   dietary supplements, intended to supplement a normal diet or to have health benefits;

–   meal replacements, dietetic food and beverages, adapted for medical or veterinary use;

–   cigarettes without tobacco, for medical purposes.

This Class does not include, in particular:

–   sanitary preparations being toiletries (Cl. 3);

–   deodorants for human beings or for animals (Cl. 3);

–   supportive bandages (Cl. 10);

–   meal replacements, dietetic food and beverages not for medical or veterinary use (Cl. 29, 30, 31, 32 or 33).

CLASS 6

Common metals and their alloys;

metal building materials;

transportable buildings of metal;

materials of metal for railway tracks;

non-electric cables and wires of common metal;

ironmongery, small items of metal hardware;

pipes and tubes of metal;

safes;

ores.

Explanatory Note 

Class 6 includes mainly unwrought and partly wrought common metals as well as simple products made of them.

This Class does not include, in particular:

–   bauxite (Cl. 1);

–   mercury, antimony, alkaline and alkaline-earth metals (Cl. 1);

–   metals in foil and powder form for use in painting, decorating, printing and art (Cl. 2);

–   certain goods made of common metals that are classified according to their function or purpose (consult the Alphabetical List of Goods).

CLASS 7

Machines and machine tools;

motors and engines (except for land vehicles);

machine coupling and transmission components (except for land vehicles);

agricultural implements other than hand-operated;

incubators for eggs;

automatic vending machines.

Explanatory Note

Class 7 includes mainly machines, machine tools, motors and engines.

This Class includes, in particular:

–   parts of motors and engines (of all kinds);

–   electric cleaning machines and apparatus.

This Class does not include, in particular:

–   certain special machines and machine tools (consult the Alphabetical List of Goods);

–   hand tools and implements, hand-operated (Cl. 8);

–   motors and engines for land vehicles (Cl. 12).

CLASS 8

Hand tools and implements (hand-operated);

cutlery;

side arms;

razors.

Explanatory Note 

Class 8 includes mainly hand-operated implements used as tools in the respective professions.

This Class includes, in particular:

–   cutlery of precious metals;

–   electric razors and clippers (hand instruments).

This Class does not include, in particular:

–   certain special instruments (consult the Alphabetical List of Goods);

–   machine tools and implements driven by a motor (Cl. 7);

–   surgical cutlery (Cl. 10);

–   side arms being firearms (Cl. 13);

–   paper knives (Cl. 16);

–   fencing weapons (Cl. 28).

CLASS 9

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments;  apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity;

apparatus for recording, transmission or reproduction of sound or images;

magnetic data carriers, recording discs;

compact discs, DVDs and other digital recording media;

mechanisms for coin-operated apparatus;

cash registers, calculating machines, data processing equipment, computers;

computer software;

fire-extinguishing apparatus.

Explanatory Note

This Class includes, in particular:

–   apparatus and instruments for scientific research in laboratories;

–   apparatus and instruments for controlling ships, such as apparatus and instruments for measuring and for transmitting orders;

–   protractors;

–   punched card office machines;

–   all computer programs and software regardless of recording media or means of dissemination, that is, software recorded on magnetic media or downloaded from a remote computer network.

This Class does not include, in particular:

–   the following electrical apparatus and instruments:

(a)   electromechanical apparatus for the kitchen (grinders and mixers for foodstuffs, fruit presses, electrical coffee mills, etc.), and certain other apparatus and instruments driven by an electrical motor, all coming under Class 7;

(b)   apparatus for pumping or dispensing fuels (Cl. 7);

(c)   electric razors, clippers (hand instruments) and flat irons (Cl. 8);

(d)   electrical apparatus for space heating or for the heating of liquids, for cooking, ventilating, etc. (Cl. 11);

(e)   electric toothbrushes and combs (Cl. 21);

–   clocks and watches and other chronometric instruments (Cl. 14);

–   control clocks (Cl. 14);

–   amusement and game apparatus adapted for use with an external display screen or monitor (Cl. 28).

CLASS 10

Surgical, medical, dental and veterinary apparatus and instruments;

artificial limbs, eyes and teeth;

orthopedic articles;

suture materials.

Explanatory Note 

Class 10 includes mainly medical apparatus, instruments and articles.

This Class includes, in particular:

–   special furniture for medical use;

–   hygienic rubber articles (consult the Alphabetical List of Goods);

–   supportive bandages.

CLASS 11

Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Explanatory Note 

This Class includes, in particular:

–   air conditioning apparatus;

–   bed warmers, hot water bottles, warming pans, electric or non-electric;

–   electrically heated cushions (pads) and blankets, not for medical purposes;

–   electric kettles;

–   electric cooking utensils.

This Class does not include, in particular:

–   steam producing apparatus (parts of machines) (Cl. 7);

–   electrically heated clothing (Cl. 9).

CLASS 12

Vehicles;

apparatus for locomotion by land, air or water.

Explanatory Note

This Class includes, in particular:

–   motors and engines for land vehicles;

–   couplings and transmission components for land vehicles;

–   air cushion vehicles.

This Class does not include, in particular:

–   certain special vehicles not for transportation purposes (consult the Alphabetical List of Goods);

–   certain parts of vehicles (consult the Alphabetical List of Goods);

–   railway material of metal (Cl. 6);

–   motors, engines, couplings and transmission components other than for land vehicles (Cl. 7);

–   parts of motors and engines (of all kinds) (Cl. 7).

CLASS 13

Firearms;

ammunition and projectiles;

explosives;

fireworks.

Explanatory Note

Class 13 includes mainly firearms and pyrotechnical products.

This Class does not include, in particular:

– matches (Cl. 34).

CLASS 14

Precious metals and their alloys;

jewellery, precious stones;

horological and chronometric instruments.

Explanatory Note

Class 14 includes mainly precious metals, goods in precious metals or coated therewith and, in general jewellery, clocks and watches.

This Class includes, in particular:

–   jewellery (i.e., imitation jewellery and jewellery of precious metal and stones);

–   cuff links, tie pins.

This Class does not include, in particular:

–   certain goods in precious metals classified according to their function or purpose (consult the Alphabetical List of Goods), for example, metals in foil and powder form for use in painting, decorating, printing and art (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 and silver embroidery (Cl. 26), cigar boxes (Cl. 34);

–   objects of art not of precious metals (classified according to the material of which they consist).

CLASS 15

Musical instruments.

Explanatory Note

This Class includes, in particular:

– mechanical pianos and their accessories;

– musical boxes;

– electrical and electronic musical instruments.

This Class does not include, in particular:

– apparatus for the recording, transmission, amplification and reproduction of sound (Cl. 9).

CLASS 16

Paper and cardboard;

printed matter;

bookbinding material;

photographs;

stationery;

adhesives for stationery or household purposes;

artists’ materials;

paintbrushes;

typewriters and office requisites (except furniture);

instructional and teaching material (except apparatus);

plastic materials for packaging;

printers’ type;

printing blocks.

Explanatory Note

Class 16 includes mainly paper and cardboard, goods made from those materials and office requisites.

This Class includes, in particular:

–   paper knives;

–   duplicators;

–   plastic sheets, sacks and bags for wrapping and packaging;

–   table linen of paper.

This Class does not include, in particular:

–   certain goods made of paper and cardboard that are classified according to their function or purpose (consult the Alphabetical List of Goods);

–   paints (Cl. 2);

–   hand tools for artists (for example, spatulas, sculptors’ chisels) (Cl. 8);

–   bed linen of paper (Cl. 24).

CLASS 17

Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials;

plastics in extruded form for use in manufacture;

packing, stopping and insulating materials;

flexible pipes, not of metal.

Explanatory Note

Class 17 includes mainly electrical, thermal and acoustic insulating materials and plastics, being for use in manufacture in the form of sheets, blocks and rods, and goods made of the materials in this class.

This Class includes, in particular:

–   rubber material for recapping tyres;

–   padding and stuffing materials of rubber or plastics;

–   floating anti-pollution barriers.

This Class does not include, in particular: 

–   certain goods made of the materials in this class that are classified according to their function or purpose (consult the Alphabetical List of Goods).

CLASS 18

Leather and imitations of leather;

animal skins, hides;

trunks and travelling bags;

umbrellas and parasols;

walking sticks;

whips, harness and saddlery.

Explanatory Note

Class 18 includes mainly leather, imitations of leather, goods made of those materials, travel goods and saddlery.

This Class includes, in particular: 

– luggage tags.

This Class does not include, in particular:

– clothing, footwear, headgear (consult the Alphabetical List of Goods);

– certain goods made of leather, imitations of leather, animal skins and hides, that are classified according to their function or purpose (consult the Alphabetical List of Goods).

CLASS 19

Building materials (non-metallic);

non-metallic rigid pipes for building;

asphalt, pitch and bitumen;

non-metallic transportable buildings;

monuments, not of metal.

Explanatory Note

Class 19 includes mainly non-metallic building materials.

This Class includes, in particular:

–   semi-worked woods (for example, beams, planks, panels);

–   veneers;

–   building glass (for example, floor slabs, glass tiles);

–   glass granules for marking out roads;

–   letter boxes of masonry.

This Class does not include, in particular:

–   cement preservatives and cement-waterproofing preparations (Cl. 1);

–   fireproofing preparations (Cl. 1).

CLASS 20

Furniture, mirrors, picture frames;

unworked or semi-worked bone, horn, ivory, whalebone or mother-of-pearl;

shells;

meerschaum;

yellow amber.

Explanatory Note

Class 20 includes mainly furniture and parts therefor, as well as certain goods made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastic.

This Class includes, in particular:

–   metal furniture and furniture for camping;

–   bedding (for example, mattresses, spring mattresses, pillows);

–   looking glasses, furniture and toilet mirrors;

–   registration number plates, not of metal;

–   letter boxes, not of metal or masonry.

This Class does not include, in particular:

–   certain mirrors, classified according to their function or purpose (consult the Alphabetical List of Goods);

–   certain goods made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastic, that are classified according to their function or purpose (consult the Alphabetical List of Goods);

–   special furniture for laboratories (Cl. 9);

–   special furniture for medical use (Cl. 10);

–   bed linen (Cl. 24);

–   eiderdowns (Cl. 24).

CLASS 21

Household or kitchen utensils and containers;

combs and sponges;

brushes (except paintbrushes);

brush-making materials;

articles for cleaning purposes;

steelwool;

unworked or semi-worked glass (except glass used in building);

glassware, porcelain and earthenware.

Explanatory Note

Class 21 includes mainly small, hand-operated utensils and apparatus for household and kitchen use as well as toilet utensils, glassware and articles in porcelain.

This Class includes, in particular:

–   utensils and containers for household and kitchen use, for example, kitchen utensils, pails, pans of iron, of aluminium, of plastics or of other materials, small hand-operated apparatus for mincing, grinding or pressing;

–   electric combs;

–   electric toothbrushes;

–   dish stands and decanter stands.

This Class does not include, in particular:

–   certain goods made of glass, porcelain and earthenware that are classified according to their function or purpose (consult the Alphabetical List of Goods);

–   cleaning preparations, soaps, etc.  (Cl. 3);

–   small apparatus for mincing, grinding or pressing, which are driven by electricity (Cl. 7);

–   razors and shaving apparatus, clippers (hand instruments), metal implements and utensils for manicure and pedicure (Cl. 8);

–   cooking utensils, electric (Cl. 11);

–   toilet mirrors (Cl. 20).

CLASS 22

Ropes and string;

nets;

tents, awnings and tarpaulins;

sails;

sacks;

padding and stuffing materials (except of paper, cardboard, rubber or plastics);

raw fibrous textile materials.

Explanatory Note

Class 22 includes mainly canvas and other materials for making sails, rope, padding and stuffing materials and raw fibrous textile materials.

This Class includes, in particular:

–   cords and twines in natural or artificial textile fibres, paper or plastics;

–   sacks and bags for transporting or storing goods and materials in bulk (consult the Alphabetical List of Goods).

This Class does not include, in particular:

–   certain nets and bags (consult the Alphabetical List of Goods);

–   strings for musical instruments (Cl. 15);

–   padding and stuffing materials of paper or cardboard (Cl. 16), rubber or plastics (Cl. 17).

CLASS 23

Yarns and threads, for textile use.

CLASS 24

Textiles and substitutes for textiles;

bed covers;

table covers.

Explanatory Note

Class 24 includes mainly textiles (piece goods) and textile covers for household use.

This Class includes, in particular:

–   household linen;

–   bed linen of paper.

This Class does not include, in particular:

–   certain special textiles (consult the Alphabetical List of Goods);

–   electrically heated blankets, for medical purposes (Cl. 10) and not for medical purposes (Cl. 11);

–   table linen of paper (Cl. 16);

–   horse blankets (Cl. 18).

CLASS 25

Clothing, footwear, headgear.

Explanatory Note

This Class does not include, in particular:

– certain clothing and footwear for special use (consult the Alphabetical List of Goods).

CLASS 26

Lace and embroidery, ribbons and braid;

buttons, hooks and eyes, pins and needles;

artificial flowers.

Explanatory Note

Class 26 includes mainly dressmakers’ articles.

This Class includes, in particular:

– slide fasteners.

This Class does not include, in particular:

– certain special types of hooks (consult the Alphabetical List of Goods);

– certain special types of needles (consult the Alphabetical List of Goods);

– yarns and threads for textile use (Cl. 23).

CLASS 27

Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors;

wall hangings (non-textile).

Explanatory Note

Class 27 includes mainly products intended to be added as furnishings to previously constructed floors and walls.

This Class does not include, in particular:

– wooden flooring (Cl. 19).

CLASS 28

Games and playthings;

gymnastic and sporting articles;

decorations for Christmas trees.

Explanatory Note

This Class includes, in particular:

–   amusement and game apparatus adapted for use with an external display screen or monitor;

–   fishing tackle;

–   equipment for various sports and games.

This Class does not include, in particular:

–   certain gymnastic and sporting articles (consult the Alphabetical List of Goods);

–   Christmas tree candles (Cl. 4);

–   diving equipment (Cl. 9);

–   electrical lamps (garlands) for Christmas trees (Cl. 11);

–   fishing nets (Cl. 22);

–   clothing for gymnastics and sports (Cl. 25);

–   confectionery and chocolate decorations for Christmas trees (Cl. 30).

CLASS 29

Meat, fish, poultry and game;

meat extracts;

preserved, frozen, dried and cooked fruits and vegetables;

jellies, jams, compotes;

eggs;

milk and milk products;

edible oils and fats.

Explanatory Note

Class 29 includes mainly foodstuffs of animal origin as well as vegetables and other horticultural comestible products which are prepared for consumption or conservation.

This Class includes, in particular:

– milk beverages (milk predominating).

This Class does not include, in particular:

–   certain foodstuffs of plant origin (consult the Alphabetical List of Goods);

–   baby food (Cl. 5);

–   dietetic food and substances adapted for medical use (Cl. 5);

–   dietary supplements (Cl. 5);

–   salad dressings (Cl. 30);

–   fertilised eggs for hatching (Cl. 31);

–   foodstuffs for animals (Cl. 31);

–   live animals (Cl. 31).

CLASS 30

Coffee, tea, cocoa and artificial coffee;

rice;

tapioca and sago;

flour and preparations made from cereals;

bread, pastries and confectionery;

edible ices;

sugar, honey, treacle;

yeast, baking-powder;

salt;

mustard;

vinegar, sauces (condiments);

spices;

ice.

Explanatory Note

Class 30 includes mainly foodstuffs of plant origin prepared for consumption or conservation as well as auxiliaries intended for the improvement of the flavour of food.

This Class includes, in particular:

–   beverages with coffee, cocoa, chocolate or tea base;

–   cereals prepared for human consumption (for example, oat flakes and those made of other cereals).

This Class does not include, in particular:

–   certain foodstuffs of plant origin (consult the Alphabetical List of Goods);

–   salt for preserving other than for foodstuffs (Cl. 1);

–   medicinal teas and dietetic food and substances adapted for medical use (Cl. 5);

–   baby food (Cl. 5);

–   dietary supplements (Cl. 5);

–   raw cereals (Cl. 31);

–   foodstuffs for animals (Cl. 31).

CLASS 31

Agricultural, horticultural and forestry products;

raw and unprocessed grains and seeds;

fresh fruits and vegetables;

natural plants and flowers;

live animals;

foodstuffs for animals;

malt.

Explanatory Note

Class 31 includes mainly land products not having been subjected to any form of preparation for consumption, live animals and plants as well as food­stuffs for animals.

This Class includes, in particular:

–   raw woods;

–   raw cereals;

–   fertilised eggs for hatching;

–   mollusca and crustacea (live).

This Class does not include, in particular:

–   cultures of micro-organisms and leeches for medical purposes (Cl. 5);

–   dietary supplements for animals (Cl. 5);

–   semi-worked woods (Cl. 19);

–   artificial fishing bait (Cl. 28);

–   rice (Cl. 30);

–   tobacco (Cl. 34).

CLASS 32

Beers;

mineral and aerated waters and other non-alcoholic beverages;

fruit beverages and fruit juices;

syrups and other preparations for making beverages.

Explanatory Note

Class 32 includes mainly non-alcoholic beverages, as well as beer.

This Class includes, in particular:

– de-alcoholised beverages.

This Class does not include, in particular:

–   beverages for medical purposes (Cl. 5);

–   milk beverages (milk predominating) (Cl. 29);

–   beverages with coffee, cocoa, chocolate or tea base (Cl. 30).

CLASS 33

Alcoholic beverages (except beers).

Explanatory Note

This Class does not include, in particular:

– medicinal beverages (Cl. 5);

– de-alcoholised beverages (Cl. 32).

CLASS 34

Tobacco;

smokers’ articles;

matches.

Explanatory Note

This Class includes, in particular:

– tobacco substitutes (not for medical purposes).

This Class does not include, in particular:

– cigarettes without tobacco, for medical purposes (Cl. 5).

CLASS 35

Advertising;

business management;

business administration;

office functions.

Explanatory Note

Class 35 includes mainly services rendered by persons or organizations principally with the object of:

(1)     help in the working or management of a commercial undertaking, or

(2)     help in the management of the business affairs or commercial functions of an
industrial or commercial enterprise,

as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services.

This Class includes, in particular:

–   the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods;  such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes;

–   services consisting of the registration, transcription, composition, compilation or systematization of written communications and registrations, and also the compilation of mathematical or statistical data;

–   services of advertising agencies and services such as the distribution of prospectuses, directly or through the post, or the distribution of samples.  This Class may refer to advertising in connection with other services, such as those concerning bank loans or advertising by radio.

This Class does not include, in particular:

–   services such as evaluations and reports of engineers 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;

financial affairs;

monetary affairs;

real estate affairs.

Explanatory Note

Class 36 includes mainly services rendered in financial and monetary affairs and services rendered in relation to insurance contracts of all kinds.

This Class includes, in particular:

–   services relating to financial or monetary affairs comprise the following:

(a)   services of all the banking establishments, or institutions connected with them such as exchange brokers or clearing services;

(b)   services of credit institutions other than banks such as co-operative credit associations, individual financial companies, lenders, etc.;

(c)   services of “investment trusts,” of holding companies;

(d)   services of brokers dealing in shares and property;

(e)   services connected with monetary affairs vouched for by trustees;

(f)    services rendered in connection with the issue of travellers’ cheques and letters of credit;

–   hire- or lease-purchase financing;

–   services of realty administrators of buildings, i.e., services of letting or valuation, or financing;

–   services dealing with insurance such as services rendered by agents or brokers engaged in insurance, services rendered to insured, and insurance underwriting services.

CLASS 37

Building construction;

repair;

installation services.

Explanatory Note

Class 37 includes mainly services rendered by contractors or subcontractors in the construction or making of permanent buildings, as well as services rendered by persons or organizations engaged in the restoration of objects to their original condition or in their preservation without altering their physical or chemical properties.

This Class includes, in particular:

–   services relating to the construction of buildings, roads, bridges, dams or transmission lines and services of undertakings specializing in the field of construction such as those of painters, plumbers, heating installers or roofers;

–   services auxiliary to construction services like inspections of construction plans;

–   services of shipbuilding;

–   services consisting of hiring of tools or building materials;

–   repair services, i.e., services which undertake to put any object into 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);

–   various repair services such as those in the fields of electricity, furniture, instruments, tools, etc.;

–   services of maintenance for preserving 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 of Class 40).

This Class does not include, in particular:

–   services consisting of storage of goods such as clothes or vehicles (Cl. 39);

–   services connected with dyeing of cloth or clothes (Cl. 40).

CLASS 38

Telecommunications.

Explanatory Note

Class 38 includes mainly services allowing at least one person to communicate with another by a sensory means.  Such services include those which:

(1)        allow one person to talk to another,

(2)        transmit messages from one person to another, and

(3)        place a person in oral or visual communication with another (radio and television).

This Class includes, in particular:

– services which consist essentially of the diffusion of radio or television programmes.

This Class does not include, in particular:

– radio advertising services (Cl. 35);

– telephone marketing (telemarketing) services (Cl. 35).

CLASS 39

Transport;

packaging and storage of goods;

travel arrangement.

Explanatory Note

Class 39 includes mainly services for the transport of people, animals or goods from one place to another (by rail, road, water, air or pipeline) and services necessarily connected with such transport, as well as services relating to the storing of goods in a warehouse or other building for their preservation or guarding.

This Class includes, in particular:

–   services rendered by companies exploiting stations, bridges, rail-road ferries, etc., used by the transporter;

–   services connected with the hiring of transport vehicles;

–   services connected with maritime tugs, unloading, the functioning of ports and docks and the salvaging of wrecked ships and their cargoes;

–   services connected with the packaging and parcelling of goods before dispatch;

–   services consisting of information about journeys or the transport of goods by brokers and tourist agencies, information relating to tariffs, timetables and methods of transport;

–   services relating to the inspection of vehicles or goods before transport.

This Class does not include, in particular:

–   services relating to advertising transport undertakings such as the distribution of prospectuses or advertising on the radio (Cl. 35);

–   services relating to the issuing of travellers’ cheques or letters of credit by brokers or travel agents (Cl. 36);

–   services relating to insurances (commercial, fire or life) during the transport of persons or goods (Cl. 36);

–   services rendered by the maintenance and repair of vehicles, nor the maintenance or repair of objects connected with the transport of persons or goods (Cl. 37);

–   services relating to reservation of rooms in a hotel by travel agents or brokers (Cl. 43).

CLASS 40

Treatment of materials.

Explanatory Note

Class 40 includes mainly services not included in other classes, rendered by the mechanical or chemical processing, transformation or production of objects or inorganic or organic substances, including custom manufacturing services.

For the purposes of classification, the production or manufacturing of goods is considered a service only in cases where it is effected for the account of another person to their order and specification.

If the production or manufacturing is not being performed to fulfil an order for goods which meet the customer’s particular needs, requirements, or specifications, then it is generally ancillary to the maker’s primary commercial activity or goods in trade.

If the substance or object is marketed to third parties by the person who processed, transformed or produced it, then this would generally not be considered a service.

This Class includes, in particular:

–   services relating to transformation of an object or substance and any process involving a change in its essential properties (for example, dyeing a garment);  consequently, a maintenance service, although usually in Class 37, is included in Class 40 if it entails such a change (for example, the chroming of motor vehicle bumpers);

–   services of material treatment which may be present during the production of any substance or object other than a building;  for example, services which involve cutting, shaping, polishing by abrasion or metal coating;

–   the custom manufacturing of goods to the order and specification of others (bearing in mind that certain offices require that the goods produced be indicated), for example, custom manufacturing of automobiles.

This Class does not include, in particular:

– repair services (Cl. 37);

– certain customization services, for example, the custom painting of automobiles (Cl. 37).

CLASS 41

Education;

providing of training;

entertainment;

sporting and cultural activities.

Explanatory Note

Class 41 covers mainly services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as services intended to entertain or to engage the attention.

This Class includes, in particular:

–   services consisting of all forms of education of persons or training of animals;

–   services having the basic aim of the entertainment, amusement or recreation of people;

–   presentation of works of visual art or literature to the public for cultural or educational purposes.

CLASS 42

Scientific and technological services and research and design relating thereto;

industrial analysis and research services;

design and development of computer hardware and software.

Explanatory Note

Class 42 includes mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities;  such services are provided by members of professions such as chemists, physicists, engineers, computer programmers, etc.

This Class includes, in particular:

–   the services of engineers and scientists who undertake evaluations, estimates, research and reports in the scientific and technological fields (including technological consultancy);

–   scientific research services for medical purposes.

This Class does not include, in particular:

–   business research and evaluations (Cl. 35);

–   word processing and computer file management services (Cl. 35);

–   financial and fiscal evaluations (Cl. 36);

–   mining and oil extraction (Cl. 37);

–   computer (hardware) installation and repair services (Cl. 37);

–   services provided by the members of professions such as medical doctors, veterinary surgeons,               psychoanalysts (Cl. 44);

–   medical treatment services (Cl. 44);

–   garden design (Cl. 44);

–   legal services (Cl. 45).

CLASS 43

Services for providing food and drink;

temporary accommodation.

Explanatory Note

Class 43 includes mainly services provided by persons or establishments whose aim is to prepare food and drink for consumption and services provided to obtain bed and board in hotels, boarding houses or other establishments providing temporary accommodation.

This Class includes, in particular:

–   reservation services for travellers’ accommodation, particularly through travel agencies or brokers;

–   boarding for animals.

This Class does not include, in particular:

–   rental services for real estate such as houses, flats, etc., for permanent use (Cl. 36);

–   arranging travel by tourist agencies (Cl. 39);

–   preservation services for food and drink (Cl. 40);

–   discotheque services (Cl. 41);

–   boarding schools (Cl. 41);

–   rest and convalescent homes (Cl. 44).

CLASS 44

Medical services;

veterinary services;

hygienic and beauty care for human beings or animals;

agriculture, horticulture and forestry services.

Explanatory Note

Class 44 includes mainly medical care, hygienic and beauty care given by persons or establishments to human beings and animals;  it also includes services relating to the fields of agriculture, horticulture and forestry.

This Class includes, in particular:

–   medical analysis services relating to the treatment of persons (such as x-ray examinations and taking of blood samples);

–   artificial insemination services;

–   pharmacy advice;

–   animal breeding;

–   services relating to the growing of plants such as gardening;

–   services relating to floral art such as floral compositions as well as garden design.

This Class does not include, in particular:

–   vermin exterminating (other than for agriculture, horticulture and forestry) (Cl. 37);

–   installation and repair services for irrigation systems (Cl. 37);

–   ambulance transport (Cl. 39);

–   animal slaughtering services and taxidermy (Cl. 40);

–   timber felling and processing (Cl. 40);

–   animal training services (Cl. 41);

–   health clubs for physical exercise (Cl. 41);

–   scientific research services for medical purposes (Cl. 42);

–   boarding for animals (Cl. 43);

–   retirement homes (Cl. 43).

CLASS 45

Legal services; security services for the protection of property and individuals;  personal and social services rendered by others to meet the needs of individuals.

Explanatory Note

This Class includes, in particular:

–   services rendered by lawyers, legal assistants, and personal advocates, to individuals, groups of individuals, organizations and enterprises;

–   investigation and surveillance services relating to the safety of persons and entities;

–   services provided to individuals in relation with social events, such as social escort services, matrimonial agencies, funeral services.

This Class does not include, in particular:

–   professional services giving direct aid in the operations or functions of a commercial undertaking (Cl. 35);

–   services relating to financial or monetary affairs and services dealing with insurance (Cl. 36);

–   escorting of travellers (Cl. 39);

–   security transport (Cl. 39);

–   services consisting of all forms of education of persons (Cl. 41);

–   performances of singers or dancers (Cl. 41);

–   computer services for the protection of software (Cl. 42);

–   services provided by others to give medical, hygienic or beauty care for human beings or animals (Cl. 44);

–   certain rental services (consult the Alphabetical List of Services and General Remark (b) relating to the classification of services).

ryan_cruz_law_san_diego_attorney_intellectual_property_trademark_washington_redskins

Washington Redskins Appeal the Trademark Office’s Decision to Cancel Their Trademark

On June 18, 2014 the U.S. trademark office (specifically, the Trademark Trial and Appeal Board (TTAB)) found the term “Redskins” was disparaging of Native Americans, when used in relation to professional football services.  Consequently, the trademark name would be cancelled unless an appeal was presented.  On August 5, 2015, the Redskins filed an appeal to fight for its name. See the official publication about its finding below. Find a good article exploring reasons why the Washington Redskins continue to fight for its trademark registration, below.

Original United States Patent and Trademark Office Publication: (June 18, 2014)

Trademark Trial and Appeal Board (TTAB) Decision in Blackhorse v. Pro Football, Inc.
(TTAB Cancellation No. 92046185)
Find the full decision and other resources at http://www.uspto.gov/news/DCfootballtrademark.jsp
June 18, 2014
The Blackhorse v. Pro Football, Inc. decision of the Trademark Trial and Appeal Board (TTAB or “Board”) today resolved the joint petition filed at the U.S. Patent and Trademark Office (USPTO) by five Native Americans, who sought cancellation of six federal registrations for trademarks that include the term “Redskins.”
The TTAB — an independent administrative tribunal within the USPTO — has determined, based on the evidence presented by the parties and on applicable law, that the Blackhorse petitioners carried their burden of proof. By a preponderance of the evidence, the petitioners established that the term “Redskins” was disparaging of Native Americans, when used in relation to professional football services, at the times the various registrations involved in the cancellation proceeding were issued. Thus, in accordance with applicable law, the federal registrations for the “Redskins” trademarks involved in this proceeding must be cancelled.
Pro Football. Inc., the respondent and owner of the involved registrations, had asserted as a defense that the petitioners should have been barred from seeking cancellation because the registrations have existed for so
long, and been the subject of significant investment. But the TTAB found the defense inapplicable as to the petitioners in this case. This decision by the TTAB does not necessarily put an end to the larger dispute between the parties , as Pro Football, Inc. may seek review by a federal court of today’s decision. The registrations will remain “on the federal register of marks” and not be listed in the USPTO’s records as “cancelled” until after any judicial review is completed.
What this decision means: if the cancellation of the registrations for the trademarks involved in this case is not appealed or if affirmed following possible review by a federal court, Pro Football, Inc., as record  owner of the involved registrations will lose the legal benefits conferred by federal registration of the marks. These benefits of federal registration include:
  • the legal presumptions of ownership and of a nationwide scope of rights in these trademarks;
  • the ability to use the federal registration ® symbol, and;
  • the ability to record the registrations with the U.S. Customs and Border Patrol Service so as to block the importation of infringing or counterfeit foreign goods.
What this decision does not mean: this decision does not, however, require the Washington D.C. professional football team to change its name or stop using the trademarks at issue in this case.
  • Losing the federal registration of a trademark does not necessarily mean that the owner loses all legal rights in the mark. This is because trademark rights in the United States come from use of a mark on or in conjunction with goods or services, not merely from the additional, optional step of federal registration.
  • The TTAB determines only whether a mark can be registered with the federal government (and thus gain the additional legal benefits thereof), not whether it can be used.
  • The mark owner may still have rights in the mark based on use, known as “common law” rights-and those use-based rights may continue to exist even if a federal registration is cancelled.
What is the Trademark Trial and Appeal Board and what does it do?
  • The TTAB is an independent administrative tribunal within the USPTO. It is authorized to determine a party’s right to register a trademark with the federal government or, if the party already owns a registration, its right to maintain it. The Board is not authorized to determine whether a party has the right to use a trademark, just whether it has the right to register it. (And thus obtain the additional legal benefits thereof, as outlined, above.)
What is a TTAB cancellation proceeding?
  • A cancellation is a TTAB proceeding in which a party seeks to cancel an existing registration of a mark.
  • Under the law, a person (including any legal entity) who believes he will be damaged by the continuing registration of a mark may file a petition with the TTAB to cancel the registration, asserting one or more grounds for cancellation.
  • Most USPTO cancellation proceedings assert grounds for cancellation under Section 2 of the Trademark Act, 15 U.S.C. § 1052, which specifiesa variety of types of terms or marks that Congress has determined to be ineligible for federal registration, including those that are determined, as in this case, to disparage an individual or group.
Can a registration that has been on the register for a long time, like the ones involved in this case, be the subject of a cancellation proceeding? Why?
  • Yes. According to federal trademark law, a long-standing registration can be the subject of a cancellation proceeding at any time, if an appropriate ground for cancellation is asserted.
  • A claim that a registered trademark was disparaging of an individual or group at the time it was originally registered is one such example of a claim that can be appropriately brought at any time, regardless of the age of the registration.
What are the options for appealing this TTAB decision?
  • A party dissatisfied with the Board’s decision has two options to seek further judicial review of it.
    • The party can file an appeal to the U.S. Court of Appeals for the Federal Circuit in Washington, D.C.; or
    • The party can file a civil action in district court.
      • Any civil action would be filed in the U.S. District Court for the Eastern District of Virginia, which has jurisdiction over civil actions seeking review of TTAB cancellation proceedings. (Before 2011, the district court in the District of Columbia had jurisdiction over such actions, but Congress changed that provision of the Trademark statute when making various amendments to the Patent statute.)

Article About Appeals (September 9, 2015):