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FREQUENTLY ASKED QUESTIONS ABOUT TRADEMARKS
Definitions
Basic
Questions
Searching
Trademarks,
Patents and Copyrights
Application
Process
Other
Definitions
What is a trademark?
A
trademark includes any word, name, symbol, or device,
or any combination, used, or intended to be used,
in commerce to identify and distinguish the goods
of one manufacturer or seller from goods manufactured
or sold by others, and to indicate the source of
the goods. In short, a trademark is a brand name.
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What
is a service mark?
A
service mark is any word, name, symbol, device,
or any combination, used, or intended to be used,
in commerce, to identify and distinguish the services
of one provider from services provided by others,
and to indicate the source of the services.
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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.
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What
is a 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.
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Basic Questions
Do I need to register my trademark?
No.
However, federal registration has several advantages
including notice to the public of the registrant's
claim of ownership of the mark, a legal presumption
of ownership nationwide, and the exclusive right
to use the mark on or in connection with the goods
or services set forth in the registration.
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What
are the benefits of federal trademark registration?
1.
Constructive notice nationwide of the trademark
owner's claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration can be used as a basis for obtaining
registration in foreign countries.
5. Registration may be filed with U.S. Customs Service
to prevent importation of infringing foreign goods.
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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.
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Where
can I get basic trademark information?
You
may access the trademark forms, plus information
about applying for a trademark, by clicking Basic Facts
About Trademarks.
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Where
can I ask a question about trademarks?
If
you need answers to specific trademark questions
or want to know more about trademarks in general,
please contact Peter T. Boyd, Esq. by filling out
our contact form.
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Are
there federal regulations governing the use of the
designations "TM" or "SM" with trademarks?
No.
Use of the symbols "TM" or "SM" (for trademark and
service mark, respectively) may, however, be governed
by local, state, or foreign laws and the laws of
the pertinent jurisdiction must be consulted. These
designations usually indicate that a party claims
rights in the mark and are often used before a federal
registration is issued.
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When
is it proper to use the federal registration symbol
(the letter R enclosed within a circle -- ® -- with
the mark.
The
federal registration symbol may be used once the
mark is actually registered in the U.S. Patent and
Trademark Office. Even though an application is
pending, the registration symbol may not be used
before the mark has actually become registered.
The federal registration symbol should only be used
on goods or services that are the subject of the
federal trademark registration. [Note: Several foreign
countries use the letter R enclosed within a circle
to indicate that a mark is registered in that country.
Use of the symbol by the holder of a foreign registration
may be proper.]
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Do
I need an attorney to file a trademark application?
No,
although it may be desirable to employ an attorney
who is familiar with trademark matters.
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What
constitutes interstate commerce?
For
goods, "Interstate commerce" involves sending the
goods across state lines with the mark displayed
on the goods or the packaging for the goods. With
services, "interstate commerce" involves offering
a service to those in another state or rendering
a service which affects interstate commerce (e.g.
restaurants, gas stations, hotels, etc.).
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How
do I find out whether a mark is already registered?
In
order to determine whether any person or company
is using a particular trademark, a trademark search
can be conducted.
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Is
a federal registration valid outside the United
States?
No.
Certain countries, however, do recognize a United
States registration as a basis for registering the
mark in those countries. Many countries maintain
a register of trademarks. The laws of each country
regarding registration must be consulted.
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Searching
Is it advisable to conduct a search of the Office
records before filing an application?
Yes.
Always conduct a trademark search before adopting,
using or registering a trademark.
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Can
the USPTO conduct a search for an applicant?
No.
After a trademark application is filed, the Patent
and Trademark Office (PTO) will conduct a search
of the records as part of the official examination
process. The official search is not done for the
applicant but rather to determine whether the mark
applied for can be registered. It is advisable to
search the records before filing the application.
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Can
trademarks be searched on-line?
We
now offer on-line searching of our trademark database.
However, this is not a subsitute for a comprehensive
trademark search report. A comprehensive trademark
search report may uncover common law uses or state
trademark uses that would bar your use in certain
geographic areas.
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Where
can I conduct a trademark search?
Searches
may be conducted onlin by filling
out our order form.
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What
are common law rights?
Federal
registration is not required to establish rights
in a trademark. Common law rights arise from actual
use of a mark. Generally, the first to either use
a mark in commerce or file an intent to use application
with the Patent and Trademark Office has the ultimate
right to use and registration.
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What
is a common law search? How can I do one? Is doing
a common law search necessary?
A
common law search involves searching records
other than the federal register and pending application
records. It may involve checking phone directories,
yellow pages, industrial directories, state trademark
registers, among others, in an effort to determine
if a particular mark is used by others when they
have not filed for a federal trademark registration.
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Trademarks, Patents and Copyrights
How do I find out if I need patent, trademark and/or copyright
protection?
Patents
protect inventions and improvements to existing
inventions. Copyrights cover literary, artistic,
and musical works. Trademarks are brand names and/or
designs which are applied to products or used in
connection with services.
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How do I register a copyright?
The
Patent and Trademark Office (PTO) does not handle
the registration of copyrights. The Copyright Office
is part of the Library of Congress (202-707-3000).
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Application Process
How do I obtain a federal trademark registration?
A
registration may be applied for online.
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Who
may file an application?
Only
the owner of the trademark may file an application
for its registration. An application filed by a
person who is not the owner of the mark will be
declared void. Generally, the person who uses or
controls the use of the mark, and controls the nature
and quality of the goods to which it is affixed,
or the services for which it is used, is the owner
of the mark.
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What
is a specimen?
A
specimen is a real-world example of how the mark
is actually used on the goods or in the offer of
services. Labels, tags, or containers for the goods
are considered to be acceptable specimens of use
for a trademark. For a service mark, specimens may
be advertising such as magazine advertisements or
brochures.
Specimens
are required in applications based on actual use
in commerce, Section 1(a), 15 U.S.C. §1051(a), and
must be filed with the Amendment to Allege Use,
15 U.S.C. §1051(c) , or the Statement of Use, 15
U.S.C. §1051(d), in applications based on a bona
fide intention to use the mark in commerce, Section
1(b), 15 U.S.C. §1051(b). Specimens are not required
for applications based on Section 44 of the Trademark
Act (for owners of foreign trademark applications
and registrations), 15 U.S.C. §1126.
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What
is the drawing?
The
"drawing" is a page which depicts the mark applicant
seeks to register. In an application based on actual
use, Section 1(a), 15 U.S.C. §1051(a), the drawing
must show the mark as it is actually used, i.e.,
as shown by the specimens. In the case of an application
based on a bona fide intention to use, Section 1(b),
15 U.S.C. §1051(b), the drawing must show the mark
as the applicant intends to use it. In an application
based on a foreign application or foreign registration,
Sections 44(d) or 44(e), 15 U.S.C. §§1126(d) and
(e), the drawing must depict the mark as it appears
or will appear on the foreign registration. The
applicant cannot register more than one mark in
a single application. Therefore, the drawing must
display only one mark.
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If
an applicant submits specimens, is a drawing still
required?
Yes.
A drawing is required in all applications, and is
used by the Office for several purposes, including
printing the mark in the Official Gazette, and ultimately,
on the registration certificate itself. Specimens,
on the other hand, are required as evidence that
a mark is in actual use in commerce.
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Do
I need an attorney to file my application?
No,
but an applicant is responsible for observing and
complying with all substantive and procedural issues
and requirements whether or not represented by an
attorney. The Patent and Trademark Office (PTO)
cannot select an attorney for an applicant. The
names of attorneys who specialize in trademark law
may be found in the telephone yellow pages, or by
contacting a local bar association.
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On
what bases can a foreign applicant file an application
for registration?
1.
Use in interstate commerce or commerce between the
United States and a foreign country.
2. Bona fide or good faith intention to use
the mark in interstate commerce or commerce between
the United States and a foreign country.
3. Ownership of an application filed in a
foreign country (if within six months of the foreign
filing date).
4. Ownership of a foreign registration (with
a certified copy).
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Can
the Office refuse to register a mark?
Yes.
The Office will refuse to register matter if it
does not function as a trademark. Not all words,
names, symbols or devices function as trademarks.
For example, matter which is merely the generic
name of the goods on which it is used cannot be
registered.
Additionally,
Section 2 of the Trademark Act (15 U.S.C. §1052)
contains several of the most common (though not
the only) grounds for refusing registration. The
grounds for refusal under Section 2 may be summarized
as:
1.
the proposed mark consists of or comprises immoral,
deceptive, or scandalous matter;
2. the proposed mark may disparage or falsely
suggest a connection with persons (living or dead),
institutions, beliefs, or national symbols, or bring
them into contempt or disrepute;
3. the proposed mark consists of or comprises
the flag or coat of arms, or other insignia of the
United States, or of any State or municipality,
or of any foreign nation;
4. the proposed mark consists of or comprises
a name, portrait or signature identifying a particular
living individual, except by that individual's written
consent; or the name, signature, or portrait of
a deceased President of the United States during
the life of his widow, if any, except by the written
consent of the widow;
5. the proposed mark so resembles a mark already
registered in the Patent and Trademark Office (PTO)
that use of the mark on applicant's goods or services
are likely to cause confusion, mistake, or deception;
6. the proposed mark is merely descriptive
or deceptively misdescriptive of applicant's goods
or services;
7. the proposed mark is primarily geographically
descriptive or deceptively geographically misdescriptive
of applicant's goods or services;
8. the proposed mark is primarily merely a
surname; and
9. matter that, as a whole, is functional.
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Can
I get a refund of monies paid to the Office?
Not
usually.
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How
can I check on the status of a pending U.S. trademark
application?
Once
you receive a filing receipt containing the serial
number of your application, you may check on the
status of a pending case by calling the Trademark
Office status line at (703) 305-8747.
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How
long does it take for a mark to be registered?
It
is difficult to predict how long it will take for
an application to mature into a registration, because
there are so many factors that can affect the process.
Generally, an applicant will receive a filing receipt
approximately six months after filing. The filing
receipt will include the serial number of the application.
All future correspondence with the PTO must include
this serial number. You should receive a response
from the Office within six to seven months from
filing the application. However, the total time
for an application to be processed may be anywhere
from almost a year to several years, depending on
the basis for filing, and the legal issues which
may arise in the examination of the application.
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How
long does a trademark registration last?
For
a trademark registration to remain valid, an Affidavit
of Use ("Section 8 Affidavit") must be filed: (1)
between the fifth and sixth year following registration,
and (2) within the year before the end of every
ten-year period after the date of registration.
The registrant may file the affidavit within a grace
period of six months after the end of the sixth
or tenth year, with payment of an additional fee.
The
registrant must also file a §9 renewal application
within the year before the expiration date of a
registration, or within a grace period of six months
after the expiration date, with payment of an additional
fee.
Assuming
that an affidavit of use is timely filed, registrations
granted PRIOR to November 16, 1989 have a 20-year
term, and registrations granted on or after November
16, 1989 have a 10-year term.
This
is also true for the renewal periods; renewals granted
PRIOR to November 16, 1989 have a 20-year term,
and renewals granted on or after November 16, 1989
have a 10-year term.
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When
did the renewal period change from twenty to ten
years?
November
16, 1989. Registrations issued on or after November
16, 1989 have a ten-year term, renewable every ten
years.
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How
long does an Intent-to-Use applicant have to allege
actual use of the mark in commerce?
An
applicant may file an Amendment to Allege Use any
time between the filing date of the application
and the date the Examining Attorney approves the
mark for publication. If an Amendment to Allege
Use is not filed, then applicant has six months
from the issuance of the Notice of Allowance to
file a Statement of Use, unless the applicant requests
and is granted an extension of time. If the applicant
fails to file either an Amendment to Allege Use
or a Statement of Use within the time limits allowed,
then the application will be declared abandoned.
No registration will be granted.
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What
are the different classes of goods and services?
GOODS
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.
Explanatory
Note
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.
Explanatory
Note
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.
Explanatory
Note
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.
Explanatory
Note
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.
Explanatory
Note
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.
Explanatory
Note
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.
Explanatory
Note
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.
Explanatory
Note
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.
Explanatory
Note
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.
Explanatory
Note
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.
Explanatory
Note
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.
Explanatory
Note
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.
Explanatory
Note
This
class includes mainly firearms and pyrotechnical
products.
Does
not include, in particular:
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.
Explanatory
Note
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.
Explanatory
Note
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.
Explanatory
Note
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.
Explanatory
Note
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.
Explanatory
Note
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.
Explanatory
Note
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:
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