HELPFUL...

CONTENTS

GENERAL
 
What is a trademark or service mark?

What is a certification mark?

What is a collective mark?

What are the advantages of a federal trademark registration?

Do I have to be a U.S. Citizen to obtain a federal registration?

When can I use the trademark symbols TM, SM and ®?

What is the commitment to the public of the USPTO?

ABOUT THE APPLICATION

What pieces of information must the application include?

What exactly is the "name of the applicant"?

Do I have to be a U.S. citizen to apply?

What exactly is the "name and address for correspondence"?

What is a "clear drawing of the mark"?

What type of drawings are accepted?

What is a "typed" drawing mark?

What is a "stylized or design form" drawing mark?

What exactly is "a listing of goods and services"?

Can I change the goods and/or services after filing my
application?

Does receiving a filing date and a serial number mean that all the application requirements have been satisfied?

ABOUT FEES

What is the USPTO "application filing fee"?

Are there other USPTO filing fees?

CLASSES

What are Classes of goods and services?


MAINTENANCE

What does trademark maintenance consist of?

___________________

What is a trademark or service mark?

• "A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.
• A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product."(*)

>> Back to the contents

What is a certification mark?

"A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization."(*)

>> Back to the contents

What is collective mark?

"A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization".(*)

>> Back to the contents

• constructive notice to the public of the registrant's claim of ownership of the mark;
• a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
• the ability to bring an action concerning the mark in federal court;
• the use of the U.S. registration as a basis to obtain registration in foreign countries; and
• the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods"(*)

>> Back to the contents

Do I have to be a U.S. Citizen to obtain a federal registration?

"No. However, an applicant's citizenship must be set forth in the record. If an applicant is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, then the applicant must choose which citizenship will be printed in the Official Gazette and on the certificate of registration."(*)

>> Back to the contents

When can I use the trademark symbols TM, SM and ®?

Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration."(*) Also, you can use the symbol"®" if a registration has been granted in a country other than the U.S.A., and that country uses the symbol "®" to identify registered trademarks.

>> Back to the contents

What is the commitment to the public of the USPTO?

"The United States Patent and Trademark Office (USPTO) reviews trademark applications for federal registration and determines whether an applicant meets the requirements for federal registration...."(*) But the USPTO cannot:

• "conduct trademark searches for the public;
• comment on the validity of registered marks;
• answer questions on whether a particular mark or type of mark is eligible for trademark registration; or
• offer legal advice or opinions about common law trademark rights, state registrations, or trademark infringement claims."(*)

>> Back to the contents

ABOUT THE APPLICATION

What pieces of information must the application include?

"An application must include the following elements before the USPTO will accept it:

• the name of the applicant;
• a name and address for correspondence;
• a clear drawing of the mark;
• a listing of the goods or services; and
• the filing fee for at least one class of goods or services."(*)

If the application does not contain such a basic pieces of information it will not be accepted by the USPTO.(*)
When you apply using our firm you are required only basic contact and mark information necessary for us to start the trademark availability search. The professional in charge of the file contacts the applicant when other pieces of information are needed.

>> Back to the contents

What exactly is the "name of the applicant"?

It is the name of the owner of the mark. "The owner of the mark is the person or entity who controls the nature and quality of the goods identified by the mark and/or the services rendered in connection with the mark. The owner may be an individual, corporation, partnership, or other type of legal entity."(*)

>> Back to the contents

"Do I have to be a U.S. citizen to apply?

No.

>> Back to the contents

What exactly is the "name and address for correspondence"?

"The name and address for correspondence is the address where the USPTO will send communications concerning the application. It may be that of the applicant or the applicant’s legal representative."(*) 

>> Back to the contents

What is a "clear drawing of the mark"?

It is a clear representation of the mark.

>> Back to the contents

What type of drawings are accepted?

Two types of drawing: "typed drawing" and "stylized or design form" drawing?

>> Back to the contents


What is a "typed" drawing mark?

It is a mark comprised of word(s), letter(s), and/or number(s), with no particular stylization or design element included in the mark.

>> Back to the contents

What is a "stylized or design form" drawing mark?

It is a mark represented by stylized lettering, a design or logo, or a combination of them.

>> Back to the contents

What exactly is "a listing of goods and services"?

It is the specification of the goods and/or services identified by the mark, or that will be identified by the mark. Be as accurate as you can in the description of the goods or services.

>> Back to the contents

"Can I change the goods and/or services after filing my application?

You can clarify or limit the goods and/or services. However, you may not expand or broaden the identification of goods and/or services after filing the application"(*)

>> Back to the contents

Does the receiving of a filing date and of a serial number means that all the application requirements have been satisfied?

"To obtain a registration, you must comply with all application requirements, and overcome any refusal(s) issued by the examining attorney during examination."(*) Occasionally, after filing date and serial number have been issued, is necessary professional intervention to overcome such a refusal problems.

>> Back to the contents

ABOUT FEES

What is the USPTO "application filing fee"?

It is the fee charged by the USPTO to process your application. It is $325.00 per class, and the registration has to be requested at least under one class. You might be eligible to pay only $225 per class. Ask your representative information how you can be able to enjoy the lower filing fee.

>> Back to the contents

Are there other USPTO fees besides the application fees?

It depends upon your "filing basis".
When the "filing basis" is "intent to use" the mark in commerce, before to obtain a registration, it is necessary the actual use of the mark in commerce and the filing of an Allegation of Use in the USPTO. An Allegation of Use can crystallize in an Amendment to Allege Use, or in a Statement of Use, depending upon certain occurrences. Filing an Amendment to Allege Use, or a Statement of Use involves payment of fees other than the basic application fees fees. 

>> Back to the contents


What are Classes of goods and services?

Classes are descriptive broad categories of goods and services. 
The Nice agreement, by which this classification was initially created, had the purpose "to create a classification system for goods and services that would be used by as many country as possible to promote consistency in trademark classification within national trademark offices"(**). "Such a system also would make it easier for countries using the system to organize and administer the trademark applications and registrations that were filed in the national offices"(**).

To give an easy to understand example, if through your trademark you sell cosmetics and also clothing, accordingly to the Nice classification, to obtain proper protection, you should register under Class 003 (Cosmetics and Cleaning Preparation) and 025 (Clothing).

Following is the official USPTO listing of the International Classes. Right after the list, is a more detailed explanation of the products or services each class refers to:

CLASS 1 (Chemicals)

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.

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

Includes, in particular:

• compost;
• salt for preserving other than for foodstuffs.

Does not include, in particular:

• raw natural resins (Cl. 02);
• chemical products for use in medical science (CL 05);
• fungicides, herbicides and preparations for destroying vermin (CL 05);
• adhesives for stationery or household purposes (CL 16);
• salt for preserving foodstuffs (CL 30);
• straw mulch (CL 31).

CLASS 2 (Paints)

Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

This class includes mainly paints, colorants and preparations used for the protection against corrosion.

Includes, in particular:

• paints, varnishes and lacquers for industry, handicrafts and arts;
• dyestuffs for clothing;
• colorants for foodstuffs and beverages.

Does not include, in particular:

• unprocessed artificial resins (CL 01);
• laundry bluing (CL 03);
• cosmetic dyes (CL 03);
• mordants for seed (CL 05);
• paint boxes (articles for use in school) (CL 16);
• insulating paints and varnishes (CL 17).

CLASS 3 (Cosmetics and cleaning preparations)

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

This class includes mainly cleaning preparations and toilet preparations.

Includes, in particular:

• deodorants for personal use;
• sanitary preparations being toiletries.

Does not include, in particular:

• chemical chimney cleaners (CL 01);
• degreasing preparations for use in manufacturing processes (CL 01);
• deodorants other than for personal use (CL 05);
• sharpening stones and grindstones (hand tools) (CL 08).

CLASS 4 (Lubricants and fuels)

Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks.

This class includes mainly industrial oils and greases, fuels and illuminants.

Does not include, in particular:

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

CLASS 5 (Pharmaceuticals)

Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying
vermin; fungicides, herbicides.

This class includes mainly pharmaceuticals and other preparations for medical purposes.

Includes, in particular:

• sanitary preparations for medical purposes and for personal hygiene;
• deodorants other than for personal use;
• cigarettes without tobacco, for medical purposes.

Does not include, in particular:

• sanitary preparations being toiletries (CL 03);
• deodorants for personal use (CL 03);
• supportive bandages (CL 10).

CLASS 6 (Metal goods)

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; iron mongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

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

Does not include, in particular:

• bauxite (CL 01);
• mercury, antimony, alkaline and alkaline-earth metals (CL 01);
• metals in foil and powder form for painters, decorators, printers and artists (CL 02).

CLASS 7 (Machinery)

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.

This class includes mainly machines, machine tools, motors and engines.

Includes, in particular:

• parts of motors and engines (of all kinds);
• electric cleaning machines and apparatus.

Does not include, in particular:

• certain special machines and machine tools (consult the Alphabetical List of Goods);
• hand tools and implements, hand operated (CL 08);
• motors and engines for land vehicles (CL 12).

CLASS 8 (Hand tools)

Hand tools and implements (hand operated); cutlery; side arms; razors.

This class includes mainly hand operated implements used as tools in the respective professions.

Includes, in particular:

• cutlery of precious metals;
• electric razors and clippers (hand instruments).

Does not include, in particular:

• certain special instruments (consult the Alphabetical List of Goods);
• machine tools and implements driven by a motor (CL 07);
• surgical cutlery (CL 10);
• paperknives (CL 16);
• fencing weapons (CL 28).

CLASS 9 (Electrical and scientific apparatus)

Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), lifesaving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

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;
• the following electrical apparatus and instruments:

  a. certain electrothermic tools and apparatus, such as electric soldering irons, electric flat irons which, if they were not electric, would belong to Class 8;
  b. apparatus and devices which, if not electrical, would be listed in various classes, i.e., electrically heated clothing, cigar-lighters for automobiles;

• protractors; punched card office machines; amusement apparatus adapted for use with television receivers only.

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. electric razors and clippers (hand instruments) (CL 08); electric toothbrushes and combs (CL 21);
  c. electrical apparatus for space heating or for the heating of liquids, for cooking, ventilating, etc. (CL 11);

• clocks and watches and other chronometric instruments (CL 14);
• control clocks (CL 14).

CLASS 10 (Medical apparatus)

Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

This class includes mainly medical apparatus, instruments and articles.

Includes, in particular:

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

CLASS 11 (Environmental control apparatus)

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

Includes, in particular:

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

Does not include, in particular:

• steam producing apparatus (parts of machines) (CL 07);
• electrically heated clothing (CL 09).

CLASS 12 (Vehicles)

Vehicles; apparatus for locomotion by land, air or water.

Includes, in particular:

• motors and engines for land vehicles;
• couplings and transmission components for land vehicles;
• air cushion vehicles.

Does not include, in particular:

• certain parts of vehicles (consult the Alphabetical List of Goods);
• railway material of metal (CL 06);
• motors, engines, couplings and transmission components other than for land vehicles (CL 07);
• parts of motors and engines (of all kinds) (CL 07).

CLASS 13 (Firearms)

Firearms; ammunition and projectiles; explosives; fireworks.

This class includes mainly firearms and pyrotechnical products.

Does not include, in particular:

• matches (CL 34).

CLASS 14 (Jewelry)

Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments.

This class includes mainly precious metals, goods in precious metals and, in general, jewelry, clocks and watches.

Includes, in particular:

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

Does not include, in particular:

• certain goods in precious metals (classified according to their function or purpose), for example:
• metals in foil and powder form for painters, decorators, printers and artists (CL 02);
• amalgam of gold for dentists (CL 05);
• cutlery (CL 08);
• electric contacts (CL 09);
• pen nibs of gold (CL 16);
• objects of art not in precious metals (classified according to the material of which they consist).

CLASS 15 (Musical Instruments)

Musical instruments.

Includes, in particular:

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

Does not include, in particular:

• apparatus for the recording, transmission, amplification and reproduction of sound (CL 09).

CLASS 16 (Paper goods and printed matter)

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks.

This class includes mainly paper, goods made from that material and office requisites.

Includes, in particular:

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

Does not include, in particular:

• certain goods made of paper and cardboard (consult the Alphabetical List of Goods);
• colors (CL 02);
• hand tools for artists (for example: spatulas, sculptors' chisels) (CL 08).

CLASS 17 (Rubber goods)

Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

This class includes mainly electrical, thermal and acoustic insulating materials and plastics, being for use in manufacture in the form of sheets, blocks and rods.

Includes, in particular:

• rubber material for recapping tires;
• padding and stuffing materials of rubber or plastics;
• floating anti-pollution barriers.

CLASS 18 (Leather goods)

Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

This class includes mainly leather, leather imitations, travel goods not included in other classes and saddlery.

Does not include, in particular:

• clothing, footwear, headgear (consult the Alphabetical List of Goods).

CLASS 19 (Nonmetallic building materials)

Building materials (nonmetallic); nonmetallic rigid pipes for building; asphalt, pitch and bitumen; nonmetallic transportable buildings; monuments, not of metal.

This class includes mainly nonmetallic building materials.

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.

Does not include, in particular:

• cement preservatives and cement-waterproofing preparations (CL 01);
• fireproofing preparations (CL 01).

CLASS 20 (Furniture and articles not otherwise classified)

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 and substitutes for all these materials, or of plastics.

This class includes mainly furniture and its parts and plastic goods, not included in other classes.

Includes, in particular:

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

Does not include, in particular:

• certain special types of mirrors, classified according to their function or purpose (consult the Alphabetical List of Goods);
• special furniture for laboratories (CL 09);
• special furniture for medical use (CL 10);
• bedding linen (CL 24);
• eiderdowns (CL 24).

CLASS 21 (Housewares and glass)

Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; un-worked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

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

Includes, in particular:

• utensils and containers for household and kitchen use, for example:
• kitchen utensils, pails, and pans of iron, aluminum, plastics and other materials, small hand-operated apparatus for mincing, grinding, pressing, etc.;
• candle extinguishers, not of precious metal;
• electric combs;
• electric toothbrushes;
• dish stands and decanter stands.

Does not include, in particular:

• certain goods made of glass, porcelain and earthenware (consult the Alphabetical List of Goods);
• cleaning preparations, soaps, etc. (Cl. 03);
• small apparatus for mincing, grinding, pressing, etc., driven by electricity (Cl. 07);
• razors and shaving apparatus, clippers (hand instruments), metal implements and utensils for manicure and pedicure (Cl. 08);
• cooking utensils, electric (Cl. 11);
• toilet mirrors (Cl. 20).

CLASS 22 (Cordage and fibers)

Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Includes, in particular:

• cords and twines in natural or artificial textile fibres, paper or plastics.

Does not include, in particular:

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

CLASS 23 (Yarns and threads)

Yarns and threads, for textile use.

CLASS 24 (Fabrics)

Textiles and textile goods, not included in other classes; bed and table covers.

This class includes mainly textiles (piece goods) and textile covers for household use.

Includes, in particular:

• bedding linen of paper.

Does not include, in particular:

• certain special textiles (consult the Alphabetical List of Goods);
• electrically heated blankets (Cl. 10);
• table linen of paper (Cl. 16);
• horse blankets (Cl. 18).

CLASS 25 (Clothing)

Clothing, footwear, headgear.

Explanatory Note

 

Does not include, in particular:

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

CLASS 26 (Fancy goods)

Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

This class includes mainly dressmakers' articles.

Includes, in particular:

• slide fasteners.

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 (Floor coverings)

Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

This class includes mainly products intended to be added as furnishings to previously constructed floors and walls.

CLASS 28 (Toys and sporting goods)

Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Includes, in particular:

• fishing tackle;
• equipment for various sports and games.

Does not include, in particular:

• Christmas tree candles (Cl. 04);
• diving equipment (Cl. 09);
• amusement apparatus adapted for use with television receivers only (Cl. 09);
• electrical lamps (garlands) for Christmas trees (Cl. 11);
• playing cards (Cl. 16);
• fishing nets (Cl. 22);
• clothing for gymnastics and sports (Cl. 25);
• confectionery and chocolate decorations for Christmas trees (Cl. 30).

CLASS 29 (Meats and processed foods)

Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats.

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

Includes, in particular:

• milk beverages (milk predominating).

Does not include, in particular:

• certain foodstuffs of plant origin (consult the Alphabetical List of Goods);
• baby food (Cl. 05);
• dietetic substances adapted for medical use (Cl. 05);
• salad dressings (Cl. 30);
• fertilized eggs for hatching (Cl. 31);
• foodstuffs for animals (Cl. 31);
• living animals (Cl. 31).

CLASS 30 (Staple foods)

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Includes, in particular:

• beverages with coffee, cocoa or chocolate base;
• cereals prepared for human consumption (for example: oat flakes and those made of other cereals).

Does not include, in particular:

• certain foodstuffs of plant origin (consult the Alphabetical List of Goods);
• salt for preserving other than for foodstuffs (Cl. 01);
• medicinal teas and dietetic substances adapted for medical use (Cl. 05);
• baby food (Cl. 05);
• raw cereals (Cl. 31);
• foodstuffs for animals (Cl. 31).

CLASS 31 (Natural agricultural products)

Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Includes, in particular:

• raw woods;
• raw cereals;
• fertilized eggs for hatching;
• mollusca and crustacea (live).

Does not include, in particular:

• cultures of micro-organisms and leeches for medical purposes (Cl. 05);
• semi-worked woods (Cl. 19);
• artificial fishing bait (Cl. 28);
• rice (Cl. 30);
• tobacco (Cl. 34).

CLASS 32 (Light beverages)

Beers; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

This class includes mainly nonalcoholic beverages, as well as beer.

Includes, in particular:

• de-alcoholized drinks.

Does not include, in particular:

• beverages for medical purposes (Cl. 05);
• milk beverages (milk predominating) (Cl. 29);
• beverages with coffee, cocoa or chocolate base (Cl. 30).

CLASS 33 (Wine and spirits)

Alcoholic beverages (except beers).

Explanatory Note

 

Does not include, in particular:

• medicinal drinks (Cl. 05);
• de-alcoholized drinks (Cl. 32).

CLASS 34 (Smokers' articles)

Tobacco; smokers' articles; matches.  

Includes, in particular:

• tobacco substitutes (not for medical purposes).

Does not include, in particular:

• cigarettes without tobacco, for medical purposes (Cl. 05);
• certain smokers' articles in precious metal (Cl. 14) (consult the Alphabetical List of Goods).
   
  

CLASS 35 (Advertising and business)

Advertising; business management; business administration; office functions.  

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.

Includes, in particular:

• services consisting of the registration, transcription, composition, compilation, or systematization of written communications and registrations, and also the exploitation or 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; 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.

Does not include, in particular:

• activity of an enterprise the primary function of which is the sale of goods, i.e., of a so-called commercial enterprise;
• 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);
• professional consultations and the drawing up of plans not connected with the conduct of business (Cl. 42).

CLASS 36 (Insurance and financial)

Insurance; financial affairs; monetary affairs; real estate affairs.

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

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 cooperative 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 travelers' checks and letters of credit;

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

  h. 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 and repair)

Building construction; repair; installation services.

This class 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.

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).

  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)

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

1. allow a 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).

Includes, in particular:

• services which consist essentially of the diffusion of radio or television programs.
• Does not include, in particular:
• radio advertising services (Cl. 35).

CLASS 39 (Transportation and storage)

Transport; packaging and storage of goods; travel arrangement.

This class includes mainly services rendered in transporting people 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.

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 functioning of airports;
• services connected with the packaging and parceling 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.

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 travelers' checks or letters of credit by brokers or travel agents (Cl. 36);
• services relating to insurance (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. 42).

CLASS 40 (Treatment of materials)

Treatment of materials.

Explanatory Note

This class includes mainly services not included in other classes, rendered by the mechanical or chemical processing or transformation of objects or inorganic or organic substances.

For the purposes of classification, the mark is considered a service mark only in cases where processing or transformation is effected 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.

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.

Does not include, in particular:

• repair services (Cl. 37).

CLASS 41 (Education and entertainment)

Education; providing of training; entertainment; sporting and cultural activities.

This class contains 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.

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.

CLASS 42 (Computer, scientific & legal)

Scientific and technological services and research and design relating thereto:
industrial analysis and research services; design and development of computer hardware and software;
legal services.

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 specialists, lawyers, etc.

Includes, in particular:

• the services of engineers who undertake evaluations, estimates, research and reports in the scientific and technological fields
• scientific research services for medical purposes

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).

CLASS 43 (Hotels and Restaurants)

Services for providing food and drink; temporary accommodations.

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 accommodations.

Includes, in particular:

• reservation services for travellers' accommodations, particularly through travel agencies or brokers;
• boarding for animals.

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, beauty & agricultural)

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.

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.

Does not include, in particular:

• vermin extermination (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 (Personal)

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

Explanatory Note

Includes, in particular:

• 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.

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 and dancers (Cl. 41);
• legal services (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).

>> Back to the contents

What does trademark maintenance consist of?

"Rights in a federally-registered trademark can last indefinitely so long as the owner continues to use the mark to identify its goods or services and files all necessary documentation in the United States Patent and Trademark Office.

Documents to File

In order to keep a registration alive, the owner of the registration must file, at appropriate times,

1. an affidavit or declaration of continued use or excusable nonuse under Section 8 of the Trademark Act (also known as a Section 8 Declaration); and
2. an application for renewal under Section 9 of the Trademark Act (also known as a Section 9 Renewal) In addition, the owner of a registration on the Principal Register may file a Declaration of Incontestability under Section 15 (Section 15 Declaration) of the Trademark Act.

Time Period for Filing Documents

After 5 consecutive years of continuous use in commerce following registration the owner may file, but is not required to file, a Declaration of Incontestability under Section 15 of the Trademark Act if, among other things, the mark is registered on the Principal Register.

Between the 9th and 10th year after registration, and every 10 years thereafter (for registrations issued or renewed on or after November 16, 1989) the owner must file a Section 8 Declaration and an Application for Renewal under Section 9 of the Trademark Act. Failure to file these documents results in the cancellation and expiration of the registration. (There is a 6-month grace period.)"(*)

>> Back to the contents