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Chapter 1300

Service Marks, Collective Marks, and Certification Marks

1301 Service Marks

1301.01 What Is a Service?

1301.01(a) Criteria for Determining What Constitutes a Service

1301.01(a)(i) Performance of a Real Activity

1301.01(a)(ii) For the Benefit of Others

1301.01(a)(iii) Sufficiently Distinct from Activities Involved in Provision of Goods or Performance of Other Services

1301.01(b) Whether Particular Activities Constitute “Services”

1301.01(b)(i) Contests and Promotional Activities

1301.01(b)(ii) Warranty or Guarantee of Repair

1301.01(b)(iii) Publishing One’s Own Periodical

1301.01(b)(iv) Soliciting Investors

1301.01(b)(v) Informational Services Ancillary to the Sale of Goods

1301.02 What Is a Service Mark

1301.02(a) Matter That Does Not Function as a Service Mark

1301.02(b) Names of Characters or Personal Names as Service Marks

1301.02(c) Three-Dimensional Service Marks

1301.02(d) Titles of Radio and Television Programs

1301.02(e) Process, System, or Method

1301.02(f) Computer Software

1301.03 Use of Service Mark in Commerce

1301.03(a) Use of Service Mark in Advertising to Identify Services

1301.03(b) Rendering of Service in Commerce Regulable by Congress

1301.04 Specimens of Use for Service Marks

1301.04(a) Specimens Must Show Use as a Service Mark

1301.04(b) Association Between Mark and Services

1301.04(c) Letterhead

1301.04(d) Specimens for Entertainment Services

1301.05 Identification and Classification of Services

1302 Collective Marks Generally

1302.01 History of Collective Marks

1303 Collective Trademarks and Collective Service Marks

1303.01 Use of Collective Trademark and Collective Service Mark Is By Members

1303.02 Examination of Collective Trademark and Collective Service Mark Applications

1303.02(a) Classification of Goods and Services in Collective Trademark and Collective Service Mark Applications

1303.02(b) Specimens of Use for Collective Trademark and Collective Service Mark Applications

1303.02(c) Special Elements of Collective Trademark and Collective Service Mark Applications

1303.02(c)(i) Manner of Control

1303.02(c)(ii) Use by Members Indicated in Dates-of-Use Clause

1304 Collective Membership Marks

1304.01 History of Membership Marks

1304.02 Purpose of Membership Mark

1304.03 Use of Membership Mark Is by Members

1304.04 Who May Apply to Register Membership Mark

1304.05 Who May Own Membership Mark

1304.06 Nature of the Collective Group

1304.07 Character of the Mark

1304.08 Examination of Collective Membership Mark

1304.08(a) Matter That Does Not Function as a Membership Mark

1304.08(a)(i) Degree or Title Designations Contrasted to Membership Marks

1304.08(b) Likelihood of Confusion

1304.08(c) Classification in Membership Mark Applications

1304.08(d) Identifications in Membership Mark Applications

1304.08(e) Specimens of Use for Membership Marks

1304.08(f) Special Elements of Applications for Collective Membership Marks

1304.08(f)(i) Exercise of Control

1304.08(f)(ii) Manner of Control

1304.08(f)(iii) Use by Members Indicated in Dates-of-Use Clause

1305 Trademarks and Service Marks Used by Collective Organizations

1306 Certification Marks

1306.01 Definition of Certification Mark

1306.01(a) Use Is by Person Other than Owner

1306.01(b) Purpose Is to Certify, Not to Indicate Source

1306.02 Certification Marks That Are Indications of Regional Origin

1306.02(a) Indicating the Region

1306.02(b) Authority to Control a Geographical Term

1306.02(c) A Government Entity as Applicant for a Geographical Certification Mark

1306.03 Certification Marks Certifying that Labor Was Performed by Specific Group or Individual

1306.04 Ownership of Certification Marks

1306.05 Characteristics of Certification Marks

1306.05(a) Same Mark Not Registrable as Certification Mark and as Any Other Type of Mark

1306.05(b) Cancellation of Applicant’s Prior Registration Required by Change from Certification Mark Use to Trademark or Service Mark Use, or Vice Versa

1306.06 Examination of Certification Mark Applications

1306.06(a) The Mark on the Drawing

1306.06(b) Specimens of Use for Certification Marks

1306.06(c) Relation Between Certification Mark and Trademark or Service Mark on Specimens

1306.06(d) Classification of Goods and Services in Certification Mark Applications

1306.06(e) Identification of Goods and Services in Certification Mark Applications

1306.06(f) Special Elements of Certification Mark Applications

1306.06(f)(i) Statement of What the Mark Certifies

1306.06(f)(ii) Standards

1306.06(f)(iii) Exercise of Control

1306.06(f)(iv) Use by Others Indicated in Dates-of-Use Clause

1306.06(f)(v) Statement That Mark is Not Used by Applicant

1306.06(f)(vi) Amendment to Different Type of Mark

1306.07 Relationship of §14 (Cancellation) to Examination of Certification Mark Applications

1306.08 Registration of Certification Mark on Basis of Foreign Registration

1306.09 Uncertainty Regarding Type of Mark

1306.09(a) Distinction Between Certification Mark and Collective Mark

1306.09(b) Distinguishing Certification Mark Use from Related-Company Use of Trademark or Service Mark

1306.09(c) Patent Licenses

1307 Registration as Correct Type of Mark

The Trademark Act of 1946 provides for registration of trademarks, service marks, collective trademarks, and service marks, collective membership marks, and certification marks. 15 U.S.C. §§1051, 1053, and 1054. The language of this Manual is generally directed to trademarks. Procedures for trademarks usually apply to other types of marks, unless otherwise stated. This chapter is devoted to special circumstances relating to service marks, collective marks, collective membership marks, and certification marks.