customers at counters, did not evidence service mark use to identify restaurant services). The mere advertising of one's goods does not constitute service mark usage. In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970) (technical bulletins and data sheets used mark merely to advertise chemicals, not consulting services. Additionally, sample letters, although showing use in connection with consulting services, were deficient as specimens because they were not in use prior to the filing date, and also further indicated that applicant was merely providing technical assistance in using the applicant's own manufactured products). In certain limited instances, otherwise deficient specimens may be accepted where other materials and statements sufficiently augment the record to support a claim of proper service mark usage. Where specimens fail to show the mark in association with the services and there is an insufficient record otherwise to permit the specimens to be accepted, the applicant must provide substitute specimens evidencing use of the mark for the services. The acceptability of substitute specimens depends in part upon the filing of an affidavit or declaration under 37 C.F.R. §2.20 supporting their use in commerce. For example, in applications under $1(a) of the Act, 15 U.S.C. §1051(a), the declaration or affidavit must support the use of the substitute specimens in commerce at least as early as the filing date of the application. See 37 C.F.R. §2.59; TMEP $905.10. See TMEP §1201.04 regarding the appearance on specimens of names of parties other than the applicant. See also 37 C.F.R. §2.38(c). 1301.05 Identification of Services This section addresses identifications of particular Regarding identifying goods and types of services. services in general, see TMEP §804 et seq. The major requirements for an identification of services to be acceptable are: (1) the identification must be definite; (2) it must use the common name or as to be readily terminology for the services, so understandable; (3) it must accurately describe the services rendered under the mark; and (4) it must specify services rendered under the mark, not just collateral or related activities associated with rendering the services. Examples Where a mark identifies checking account services, the identification "banking services in the nature of a checking account" is more accurate than the general identification "banking services," which is inclusive of types of banking services which the mark does not serve to identify and indicate the source of. The former recitation is more accurate, definite, and clearly stated. On the other hand, if a service mark identifies a bank's many services, then the more general "banking services" identification would be appropriate. Thus, either of these identifications could be accepted depending upon the particular circumstances, including the nature of the mark and its use, or intended use (for intent-to-use applications), in the marketplace. (The services specified in both identifications would be in Class 36.) "Radio broadcasting services" (Class Examples 38) would be an appropriate identification where a radio station uses a mark, such as call letters, to indicate the source of its broadcasting services generally. On the other hand, if an applicant is using as a mark the name of a weekly comedy television show, "television broadcasting services" would not be appropriate because the mark does not serve to identify and distinguish the electrical Instead, the transmission of the program. applicant should identify the services as "television entertainment services in the nature of a series of comedy programs" (Class 41). Examples of other include "television television-related services advertising agency services" (Class 35), "television equipment repair services" (Class 37), "television production services" (Class 41) and "television program syndication services" (Class 41). Where a service involves more than one activity, the identification should emphasize the most significant aspect of the service in connection with which the mark is used or intended to be used, as appropriate. Specification of the services may be followed by a brief reference to collateral or related aspects, if necessary or desired. Generally, the identification should not emphasize the method or manner by which a service is provided although, depending upon circumstances, reference to such aspects may be appropriate in a trailing phrase. Example "Accounting services" (Class 35) is an acceptable identification of services; thus, whether this type of service is rendered by use of computers or other means need not be mentioned. Examples "Dinner theatre services" (Class 41) emphasizes the entertainment aspect associated with theatre generally, whereas "night club services" (Class 42) indicates primarily the restaurant nature of services. May 1993 In certain situations, where supported by the record, broad identifications of services may be permitted for organizations such as labor unions, trade associations, charitable organizations, fraternal groups and others. Example - "Association services, namely, promoting the interests of authors" (Class 42) is acceptable identification language where it accurately indicates the services rendered under the mark and is supported by the record. For franchise services (rendered by a franchisor as distinguished from a franchisee), in addition to specifying franchising services, the identification should include an indication of the type of franchise. Example "franchising services, namely, offering technical assistance in the establishment and/or operation of restaurants" (Class 35). Applicants should exercise care when choosing language for identifying the services in an application because an applicant can amend the identification only within the scope of that wording. See 37 C.F.R. §2.71(b); TMEP §§804.09 and 804.10. Thus, the applicant should take care to present an accurate identification, i.e., one which conveys the actual services in connection with which the mark is used, or intended to be used. The Office will determine the proper classification if classification is omitted or incorrect. classification, see TMEP §§805 et seq. and 1301.06, and Regarding Chapter 1400. 1301.06 Classification of Services Services recited in applications are placed in numbered classes according to the arrangement set forth in the International Classification of Goods and Services for the Purposes of the Registration of Marks Under the Nice Agreement-Part I (6th ed. 1992), published by the World Intellectual Property Organization (WIPO), 34, chemin des Colombettes, 1211 Geneva 20 (Switzerland). The United States adopted this classification system as of September 1, 1973. The numbers and names of the classes for services in the international system and the equivalent prior United States classes are: Int. Class 35 (U.S. Class 101) Advertising and Int. Class 36 (U.S. Class 102) Insurance and Int. Class 37 (U.S. Class 103) Building Int. Class 38 (U.S. Class 104) Telecommunications Int. Class 40 (U.S. Class 106) Treatment of Int. Class 41 (U.S. Class 107) Education and Int. Class 42 (U.S. Class 100) Miscellaneous For more specific information on the nature of the particular services in the various classes, see the explanatory notes on classes which are a part of the International Classification. See also TMEP Chapter 1400. As is shown by the list of class names above, the United States classes which were used prior to September 1, 1973, were essentially the same as the international classes. In general, most services included in a prior United States class now are included in the corresponding international class. However, there may be some variation in classification of some services before September 1, 1973, and after September 1, 1973, due to differences in international interpretation and that of the United States as to appropriate content for various classes. 1302 Collective Marks Generally Section 45 of the Trademark Act, 15 U.S.C. §1127, defines "collective mark" as follows: The term "collective mark" means a trademark or service mark- (1) used by the members of a cooperative, an association, or other collective group or organization, or (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, and includes marks indicating membership in a union, an association or other organization. Under the Trademark Act, a collective mark must be owned by a collective entity even though the mark is used by the members of the collective. There are basically two types of collective marks: (1) collective trademarks or collective service marks and (2) collective membership marks. The distinction between these types of collective marks is explained in Aloe Creme Laboratories, Inc. v. American Society for Aesthetic Plastic Surgery, Inc., 192 USPQ 170, 173 (TTAB 1976), as follows: A collective trademark or collective service mark is a mark adopted by a "collective" (i.e., an association, union, cooperative, fraternal organization, or other organized collective group) for use only by its members, who in turn use the mark to identify their goods or services and distinguish them from those of nonmembers. The "collective" itself neither sells goods nor performs services under a collective trademark or collective service mark, but the collective may advertise or otherwise promote the goods or services sold or rendered by its members under the mark. A collective membership mark is a mark adopted for the purpose of indicating membership in an organized collective group, such as a union, an association, or other organization. Neither the collective nor its members uses the collective membership mark to identify and distinguish goods or services; rather, the sole function of such a mark is to indicate that the person displaying the mark is a member of the organized collective group. See also In re International Institute of Valuers, 223 USPQ 350 (TTAB 1984). See TMEP §§103 and 1303 concerning collective trademarks and service marks; TMEP §§105 and 1304 concerning collective membership marks; and TMEP §§104 and 1305, which distinguish collective trademarks or service marks from trademarks and service marks used by collective organizations. 1302.01 History of Collective Marks Section 4 of the Trademark Act of 1946, 15 U.S.C. §1054, provides for registration of both collective marks and certification marks, without distinguishing between them, but $45 of the Act, 15 U.S.C. §1127, defines collective marks and certification marks separately, as distinctly different types of marks. (Regarding certification marks, see TMEP §§106 and 1306.) A brief history will serve to put these sections in perspective. The earlier statutory provision, out of which §4 and the accompanying definitions in §45 grew, was the June 10, 1938, amendment of the Trademark Act of 1905. Under the Act of 1905, registration could be based only on a person's own use of a mark. The purpose of the 1938 amendment was to provide for registration of a mark by an owner who "exercises legitimate control over the use of a collective mark." "Collective marks," however, were not defined and, as a result, registrations under the 1938 amendment include marks which are now known as collective marks, as certification marks, and as trademarks used by related companies. The Act of 1946 undertook to define the separate types of marks specifically, in §45, in order to avoid confusion and overlap. Regarding use of a mark by related companies, see §5 of the Trademark Act, 15 U.S.C. §1055. See TMEP §1304.01 for additional history relating to collective membership marks. 1303 Collective Trademarks and Collective Service Marks Collective trademarks and collective service marks indicate commercial origin of goods or services just as regular trademarks and service marks do, but as collective marks they indicate origin in members of a group rather than origin in one party. The mark is used by all members of the group; therefore, no one member can own the mark, and the collective organization holds the title to the collectively used mark for the benefit of all members of the group. An agricultural cooperative of produce sellers is an example of a collective organization which does not sell its own goods or render services, but promotes the goods and services of its members. The collective organization might conduct advertising or other promotional programs in which reference is made to the mark in order to publicize the mark and promote the business of the members, but this would be merely informational use or a publicity display of the mark. 1303.01 Use of Collective Trademark and Collective Service Mark Is by Members: Compared to Trademark or Service Mark Applications for registration of collective trademarks and collective service marks differ in form from applications for registration of other trademarks and service marks because of the difference in ownership and use of collective marks. Under the definition of "collective mark" in §45 of the Trademark Act, 15 U.S.C. §1127, a collective mark must be owned by a collective entity. The use of a collective trademark or collective service mark is by members of the collective; therefore, rather than asserting use or intended use of the mark, the applicant must assert either (1) that the applicant is exercising legitimate control over the use of the mark in commerce by its members (for applications filed pursuant to §1(a) of the Act, 15 U.S.C. §1051(a), or allegations of use filed pursuant to §1(c) or (d), 15 U.S.C. §1051(c) or (d)), or (2) that the applicant has a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members (for applications filed pursuant to §§1(b) or 44, 15 U.S.C. §§1051(b) or 1126). In certain situations, notwithstanding the use of a collective trademark or collective service mark by the members of the collective, the collective itself may also use the same mark as a trademark for the goods covered by the collective trademark or service mark registration. The "anti-use-by-owner rule" of §4 of the Trademark Act, 15 U.S.C. §1054, has been interpreted not to apply to collective marks. See Roush Bakery Products Co. v. F.R. Lepage Bakery Inc., 4 USPQ2d 1401 (TTAB 1987), aff'd, 851 F.2d 351, 7 USPQ2d 1395 (Fed. Cir. 1988), withdrawn, vacated and remanded, 863 F.2d 43, 9 USPQ2d 1335 (Fed. Cir. 1988), vacated and modified, 13 USPQ2d 1045 (TTAB 1989). The Trademark Law Revision Act of 1988, which became effective on November 16, 1989, amended §4 to indicate that the "anti-use-by-owner rule" in that section applies specifically Therefore, under certain to certification marks. circumstances the same mark can be used as a trademark or a service mark by a collective in addition to being used as a collective trademark or a collective service mark by the members of the collective. 1303.02 Examination of Collective Trademark and Collective Service The examination of applications to register collective trademarks and collective service marks is conducted in a manner similar to the examination of applications to register regular trademarks and service marks, using most of the same criteria of registrability. Thus, the same standards generally applicable to trademarks and service marks are used in considering issues such as descriptiveHowever, use and ownership ness or disclaimers. requirements are slightly different due to the nature of See TMEP $1303.02(c) concerning collective marks. particular features of these types of applications. Regarding examination of applications to register collective membership marks, see TMEP §1304. May 1993 |