About Trademarks and Service Marks

NEW LAW
Massachusetts recently adopted the International Trademark Association’s Revised Model State Trademark Bill. The new law, G.L. c.110H, became effective October 29, 2006. It updates and expands existing registration and protection provisions to reflect federal trademark law and to provide more consistency from state to state. Some of the bill’s more important provisions and the Division’s practices and procedures are summarized below:

Definitions

A “trademark is any word, name, symbol or device, or combination of these, used by a person (individual, partnership, corporation or association) to identify his goods and to distinguish them from the goods manufactured or sold by others. Trademarks indicate the source of goods, even if that source is unknown. Some examples of well-known trademarks are: Kodak, Coca-Cola, GE, Life-Savers and McDonalds (with golden arches).

A “service mark” identifies and distinguishes a person’s services and is given the same protection as a trademark. “Citibank” (Service mark for Citibank), “Greyhound” (service mark Greyhound Bus Lines), and “Hilltop” (service mark for the Hilltop Restaurant) are a few better-known examples of service marks.

A “trade name” is a name used by a person to identify a business or vocation of that person. A trade name may be registered as a trademark or service mark only if it also functions as a trademark or service mark.

A person may register a trademark or service with the Division if the mark is used in the Commonwealth. The use must be bona fide and not merely to reserve a right in the mark. A trademark is considered in use when it is placed on the goods or containers and tags, labels, displays or documents associated with the goods and sold or transported in the Commonwealth. A service mark is used in the Commonwealth when it is used or displayed in the sale or advertising of services rendered in the Commonwealth.

Registration

Registration in Massachusetts can result in material advantages to the owner of the mark. Registered trademarks and service marks are indexed on the Division’s website and provide notice to the public of the owner’s property interest in the mark. Registration also establishes a date of first use in the state and may be helpful in obtaining federal registration. Further, registration may allow for additional remedies in cases involving infringement. Specifically, the court may order treble damages and attorney fees if it finds the infringer acted in bad faith, with knowledge of the wrongfulness of his conduct or where other circumstances warrant the imposition of additional damages.

A person who uses a mark in the Commonwealth may register with the Division an application containing the following information:

the name of the individual or business organization and the business address;
if the applicant is a business, the type of business, and if applicable, the state and date of organization;
if the applicant is a partnership, the names of the general partners;
whether the mark is a trademark or service mark;
a description of the mark;
a description of the goods and services used in connection with the mark;
for each class, the number and class (see classification schedule which follows) in which the goods or services fall;
the manner in which the mark is used in connection with the goods or services;
the date the mark was first used in business and the date the mark was first used in the Commonwealth;
whether the applicant or a predecessor has filed an application for registration of the mark with the United States Patent and Trademark Office, if an application for registration has been filed, the file date and serial number, the status of the application; and if the application was refused, the reason for refusal; and
a specimen showing the mark as actively used. The sample specimen may not be larger than 3” x 3”;

The application must be signed under penalty of perjury.

The term of registration is five (5) years. Forms may be obtained from the Division website at www.sec.state.ma.us/cor.

Classification of Goods and Services

Classification of goods are as follows:

Class 1 Chemicals

Chemicals used in industry, science, photography, as well as in agriculture, horticulture, forestry; unprocessed resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesive used in industry.

Class 2 Paints

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

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.

Class 4 Lubricants and Fuels

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

Class 5 Pharmaceuticals

Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; 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

Class 6 Metal Goods

Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; nonelectric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

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.

Class 8 Hand Tools

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

Class 9 Electrical and Scientific Apparatus

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

Class 10 Medical Apparatus

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

Class 11 Environmental Control Apparatus

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

Class 12 Vehicles

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

Class 13 Firearms

Firearms, ammunition and projectiles; explosives; fireworks.

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 other chronometric instruments.

Class 15 Musical Instruments

Musical instruments

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); printers’ type; Printing blocks.

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.

Class 18 Leather Goods

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

Class 19 Non-metallic building materials

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

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.

Class 21 Houseware and Glasses

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; steelwool; unworked or semi-worked glass(except glass used in building); glassware, porcelain and earthenware, not included in other classes.

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.

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.

Class 25 Clothing

Clothing, footwear and headgear.

Class 26 Fancy Goods

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

Class 27 Floor Coverings

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

Class 28 Toys and Sporting Goods

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

Class 29 Meats and Processed Foods

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

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.

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.

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.

Class 33 Wines and Spirits

Alcoholic beverages (except beers).

Class 34 Smokers’ Articles

Tobacco; smokers’ articles; matches.

Classification of services are:

Class 35 Advertising and Business Management

Advertising; business management; business administration; office functions.

Class 36 Insurance and Financial

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

Class 37 Building Construction and Repair

Building construction; repair; installation services.

Class 38 Telecommunications

Telecommunications

Class 39 Transportation and Storage

Transportation and storage of goods; travel arrangement.

Class 40 Treatment of Materials

Treatment of Materials.

Class 41 Education and Entertainment

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

Class 42 Computer, Scientific and Legal

Computer, 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.

Class 43 Hotels and Restaurants

Services for providing food and drink; temporary accommodations.

Class 44 Medical, Beauty and Agriculture

Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

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.

Refusal to Register

The Secretary may refuse to register a mark for a variety of substantive and procedural reasons. G.L. c.110H § 2 provides that a mark may not be registered if it

consists of or comprises immoral, deceptive or scandalous matter;
consists of or comprises matter which may disparage or falsely suggest a connection with persons, institutions, beliefs or national symbols;
consists of or comprises the flag or coat of arms or other insignia of the United States or any state, municipality or other foreign nation or any simulation thereof;
consists of or comprises the name, signature or portrait of a living individual without written consent; or
consists of a mark which is merely descriptive or deceptively misdescriptive of the goods or services of the applicant. A mark is descriptive if it describes a purpose, characteristic or quality of the goods. A mark is geographically descriptive if the mark uses geographic location to identify goods or services. A mark may also be descriptive if the mark is primarily a surname.
Marks that are descriptive may be registered if they become distinctive of applicant’s good or services. The Secretary may accept as evidence that a mark has become distinctive, continuous use of the mark in the commonwealth for five (5) years; and
is likely to cause confusion with a previously registered mark or a trade name currently in use.

Trademark applications may also be rejected because of errors in the application process, such as:

the application is incomplete;
the filing fee is not enclosed or is for the wrong amount;
the specimen is not enclosed;
the specimen is larger than 3”x3”.
the application is not properly executed;
the applicant is not the owner of the mark;
the specimen does not show use on the class of goods or services sought to be registered.

If the Secretary finds that an application does not comply with law or contain the information required by 950 CMR 62.00, the Division shall notify the applicant in writing and specify the reasons for refusal. The notice may be posted on the Division’s website, sent by mail, postage pre-paid, to the address provided by applicant, or if the applicant has provided the Division with an electronic mail address, to such address. The applicant shall have a reasonable period of time specified by Secretary in which to reply or amend the application, in which event the application shall be re-examined. If the applicant fails to reply or amend within the specified period, the application shall be considered abandoned. This procedure may be repeated until the Secretary notifies applicant of his intent to finally refuse registration of the mark. Applicant may, within twenty (20) days of the date of the notice, request to be heard at an adjudicatory proceeding before the Division subject to the provisions of M.G.L. c.30A, the State Administrative Procedure Act. The proceedings shall be governed by and conducted in accordance with 950 CMR 101, the Rules and Regulations for the Conduct of Adjudicatory Proceedings before the Corporations Division.

Upon the expiration of the twenty (20) day period or conclusion of the adjudicatory proceedings, if applicable, the Secretary shall issue a notice of final refusal to register.

Upon such notice, applicant may seek a writ of mandamus to compel registration.

Assignment, Name Change and Other Amendments to Registration

An assignment of a mark is transfer of all ownership rights associated with the mark. Assignment must be made by a duly executed writing and may be recorded with the Division. Assignment forms are available on the Division’s website at www.sec.state.ma.us/cor. An assignment is void against a subsequent purchaser for value without notice of assignment unless the assignment is recorded with the Division within three (3) months of the date of the assignment or before the purchase.

If the name or other information pertaining to the registrant changes, the registrant may file an amendment to the registration evidencing such change. Amendment forms are available on the Division’s website at www.sec.state.ma.us/cor.

Renewal Registration of a mark is effective for a term of five (5) years from the date of registration. A mark may be renewed for an additional five-year period by application filed within six months before the expiration of the expiring term. Renewal forms are available on the Division’s website at www.sec.state.ma.us/cor. An application for renewal must include a verified statement that the mark is still in use and include the required specimen.

Cancellation

The Division shall cancel a mark where:

the registrant voluntarily requests cancellation;
the mark is not renewed; or
the superior court has found

a. that the mark has been abandoned;

b. the registrant is not the owner of the mark;

c. the registration was granted improperly or fraudulently;

d. the mark has become generic for the goods or services for which it was registered;

e. the mark is so similar as to cause confusion or be mistaken for a mark registered by another person in the U.S. Patent and Trademark Office prior to the date of filing the application for registration and has not been abandoned; or

f. other grounds sufficient to warrant cancellation exist.

No fee is required.

Fees and Methods of Payment

The fees for filing documents are as follows:

Trademark/Service Mark Application	$50.00 per class
Renewal	$50.00 per class
Assignment	$50.00 per class
Registrant Name or Address Amendment	$50.00 per class

The fee for a document filed by facsimile is $45.00 per class for Applications, Renewals and Assignments and $45.00 for a Registrant Name or Address Amendment. Facsimile transactions will be subject to an additional expedited service fee assessed by a third party vendor.

Other fees, including the fee for copies of documents are set forth in 801 CMR 4.00 Rates, issued by the Executive Office for Administration and Finance.

Fees may be paid for by the following methods:

In person: cash, personal or cashier’s check or money order;
By mail: personal or cashier’s check or money order; or
By facsimile: MasterCard, VISA, electronic funds transfer or debit card.

Personal checks, cashier’s check and money orders must be made payable to the Commonwealth of Massachusetts. The drawer must be acceptable to the filing office. Each check must be for an amount equal to the cost of service and be drawn on a bank acceptable to the filing office.

Payment by MasterCard, VISA or debit card shall be accepted by the filing office for facsimile transactions. Remitters shall provide the Division with the following information:

the card number;
the expiration date of the card;
the name of the approved card issuer;
the name of the person or entity to whom the card was issued; and
the billing address for the card.

Payment by electronic funds transfer under National Automated Clearing House Association (NACHA) Rules from remitters who have entered into appropriate NACHA approved arrangements for those transfers, and who authorize the relevant transfer pursuant to 950 CMR 62.00 will be accepted only for facsimile transactions.

Payment will not be deemed tendered until the issuer or agent has confirmed to the filing office that payment will be forthcoming.