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1992 TRADEMARKPETER COSGRIFF JOHN W. DUNN ARTHUR A. ABPLANALP, JR. TIMOTHY H. BERRY ALLEN C. CHRISTENSEN LAWRENCE P. HARTLAUB DIANE L. HERMAN SPECIAL COUNSEL: JERRY W. HANNAH Mr. William James Town Manager Town of Avon P.O. Box 975 Avon, CO 81620 0 LAW OFFICES COSGRIFF, DUNN & ABPLANALP A PARTNERSHIP INCLUDING A PROFESSIONAL CORPORATION VAIL NATIONAL BANK BUILDING SUITE 300 108 SOUTH FRONTAGE ROAD WEST VAIL, COLORADO 81657 TELEPHONE: (303) 476 -7552 TELECOPIER: (303) 476 -4765 June 24, 1992 Re: Trademark Registration Dear Bill: IN LEADVILLE: COSGRIFF, DUNN & BERRY P.O. Box 1 1 LEADVILLE, COLORADO 80461 (719) 486 -1885 Enclosed is the Certificate of Trademark Registration from the Colorado Secretary of State. You and I had agreed that federal registration was not necessary because of limited interstate use of the mark. If the mark might be changed again in the future, another registration must be filed. The registration must be renewed in 10 years. Please mark a tickler for April 1, 2002 to have it renewed through your office or ours. LPH /lph Enclosure Respectfully, COSGRIFF, r Lawrence P. ABPLANALP Hartla THE PROFESSIONAL CORPORATION IS DUNN a ABPLANALP, P.C. IN VAIL. ■ ri STATIE DEPARTMENT OF STATE CERTIFICATE I, NATALIE MEYER, ,secretary of State of the State of Colorado hereby certify that TOWN OF AVON, A COLORADO MUNICIPAL CORPORATION PO BOX 975 AVON, CO 81620 has filed the Trademark AVON (WITH STYLIZED LETTERING) in classification (42) MISCELLANEOUS claiming such Trademark was first used anywhere on APRIL 15, 1992 and first used in Colorado on APRIL 15, 1992 A reproduction of such Trademark is attached hereto. Accordingly, the undersigned, hereby issues this Certificate of Registration effective for a period of ten years from this date. Trademark no. 921060195 Dated: JUNE 15, 1992 Town of Avon P.O. Box 975 Avon, Colorado 81620 (303) 949 -4280 aa: 1 Fe .111 1 �_ Filing Feeaiii��y7f' This documwI must oc Lypewratca APPLICATION FOR REGISTRATION OF . MAIL TO: Colorado Secretary of State ^ M 1 1560 Broadway, Suite 200 -Denver, _ Colorado 80202 (303) 8942200 }TRADEMARK SERVICEMARK for office use only T a Colorado Municipal Corporation- NUMBER. %Z,- _ STRFFr SUITE OR APL PostLOffice_B_ox 975 CrrY z STATE __ _. _ _ _ _ ZIP CO- 81620 STATE OF INCORPORATION Colorado (complete only if B corporation} wORDS- . -von __.. CHECK ONE:. ❑ waROS 0NLy woRDS wrni o mm tFT'r mm ❑ woRtis AND msIGN (3 FAC3I1411.FS REQUM= 0 FACSIMMM REQUIRED) (3 FACSIMRFS REQUIRM) DESIGN ONLY — NO WORDS IN TRADEMARK (3 FACSi ADM REQUIRED) DESCRIBE BRIEFLY -- _¢�.:eti::. :. -.._ _ _- _�_�.. .._. ____- ' ... -- -- ..._ �_�. -.. _- saw •-. ,.. -_ _....__ - 4. • • ONE ONLY on b3ck of • CLASSTnLE - — — _ falsrusmANYmIE(MO. nAV. ii6 -_•THIS DATE MOIST BE BEFORE'-_-_ -' Fn=usmva col oRAao - A= XD_ l 15.- 1992 OR SAME AS THIS DATE —► B'jpr i 1 1 S i 1997 1_ 5 MANNER IN �VHJCH TRADEMARK IS USED — 132 13--i-ef! Letterhead advertising ng town; pncterc `brr),t- _hure9, pamnhl pfc+ npwcnanarc magazines _ DECLARATION • • COUNTY OF- Eagle } SS William James, Town Manager, being duly shvwo dcture Ow I am de smnerhtpplicant owned (FULL NAME OF PERSON DMC(r1TNG APPLJCAT ION) abom w am the rp6arited agnn or officer of said owoehpplirant dut 1 vmly believe do appliam is dw ewner of the mdemfk and thin no other person or orpnineion has the riglu so me such aadamrk in this State ocher e, the identical farm dhaeof or um such near nesemblsrhtz tlhaoo as might be dcvLud a deceive or be miwken thnef r thal the aurmrcnu so forth above m vw, that thc acconvonyutg specimens w facwniies• andlor daoipum above truly reprnem the mark as aced: and don the applicant hereby appoint; the Seaeury of Sure as agent for sovitx of process in any anion nelttvtg u the registration vvhieb only be issued. if the appliam be or shall beeortc a nonresidanial or foreign corporation not licensed to do business in this Sure, w cannot be found in this State. INDICATE SIGNER'S RELAnONSHIP TO OWNMAPPLICANT BELOW APPLICANT'S Town Manager SIGNED (Self. PPmsi ip via - President. etc.) Subscribed and sworn to before this —& `day of (SEAL) My commission expires F,"�" 3� (NOTAR) - PL!BLICI.\ (. ) LAW OFFICES COSGRIFF, DUNN & ABPLANALP A PARTNERSHIP INCLUDING A PROFESSIONAL CORPORATION Colorado Secretary of State Corporations Office 1560 Broadway, Suite 200 Denver, CO 80202 Re: Trademark Registration Town of Avon Dear Sir or Madam: I enclose the following: IN LEADVILLE: COSGRIFF, DUNN & BERRY P.O. Box 1 1 LEADVILLE, COLORADO 80461 (719) 486 -1885 1. Application for Registration of Trademark with $50.00 filing fee. I enclose an extra copy for filing stamp and return to me. Thank you for your consideration. Respectfully, COSGRIFF, DUNN & ABPLANALP Lawrence P. Hartlaub LPH cc: William James, Town Manager. THE PROFESSIONAL CORPORATION IS DUNN a ABPLANALP, P.C. IN VAIL. VAIL NATIONAL BANK BUILDING PETER COSGRIFF JOHN W. DUNN SUITE 300 ARTHUR A. ABPLANALP, JR. 108 SOUTH FRONTAGE ROAD WEST TIMOTHY H. BERRY ALLEN C. CHRISTENSEN VAIL, COLORADO 81657 LAWRENCE P. HARTLAUB DIANE L. HERMAN TELEPHONE: (303) 476 -7552 TELECOPIER: (303) 476 -4765 SPECIAL COUNSEL: JERRY W. HANNAH June 11, 1992 Colorado Secretary of State Corporations Office 1560 Broadway, Suite 200 Denver, CO 80202 Re: Trademark Registration Town of Avon Dear Sir or Madam: I enclose the following: IN LEADVILLE: COSGRIFF, DUNN & BERRY P.O. Box 1 1 LEADVILLE, COLORADO 80461 (719) 486 -1885 1. Application for Registration of Trademark with $50.00 filing fee. I enclose an extra copy for filing stamp and return to me. Thank you for your consideration. Respectfully, COSGRIFF, DUNN & ABPLANALP Lawrence P. Hartlaub LPH cc: William James, Town Manager. THE PROFESSIONAL CORPORATION IS DUNN a ABPLANALP, P.C. IN VAIL. - :I M -1 (Kev. 12l ) F ping Fee This document must be typewritten APPLICATION FOR REGISTRATION OF MAIL TO: I for office use only Colorado Secretary of State n , Lw ki v. :i.:G ;:, v..:l.: 1560 Broadway, Suite 200 Denver, Colorado 80202 (303) 894 -2200 l TRADEMARK f SERVICEMARK VIIII 061 1111113=� T'ewn,;-,®:C-6:h-; a Colorado Municipal Corporation - NUMBER _ - = STREET SUITE OR APT. Post..- Office_.B-ox 975 CITY - STATE - ZIP Avon,-- - - -- CO- 81620 STATE OF INCORPORATION Colorado- (complete only if a corporation) 2 DESCRIPTION OF TRADErAARK — Complete A or B, but not both WORDS _. .Avon. CHECK ONE:. ❑ (3 FACSIMU rc REQUIRED) (3 FACSIMILES REQUIRED) ❑ WORDS IMU ES REIQUIRID) DESIGN ONLY — NO WORDS IN TRADEMARK (3 FACSIMILES REQUIRED) DESCRIBE BRIEFLY 3 CLASSIFICATION — Choose ONE ONLY from list on back of form C XS-§T NUMBER"`. CLASS TITLE. -- - GC=efi T'ari "fiL a _ _ — DATE FIRST USED by applicant or his predecessor Complete .. FIR.sr usM (MO. DAY. YR) - _ - < IIS DATE MUST BE BEFORE"- Fmsr usED IN coLoRADo - g=- Agri 1 15 , 1992 OR SAME AS THIS DATE --> B April 15, 1992 5 rAANNER IN WHICH TRADENIARK IS USED — Be Brief! Letterhead, advertising town. posters.- brochures, =ambhlets, newGPPZrG, magazines DECLARATION • • STATE OF l COUNTYOF Eagle } SS William James, Town Manager, being duly sworn, declare that 1 am the owner /applicant named (FURL NAME OF PERSON E)MCUnNG APPLICATION) above. or am the authorized agent or officer of said owner /applicant; that 1 verily believe the applicant is the owner of the trademark and that no other person or organization has the right to use such trademark in this State either in the identical form drerwf or in such new resemblanor thcrew as might be calculated to deceive or be mistaken therefor, that the statements set forth above are true; that the accompanying specimens or facsimiles, and/or description above truly represent the mark as used: and that the applicant hereby appoints the Secretary of State as agent for service of process in any action relating to the registration which may be issued, if the applicant be or shall become a nonresidential or foreign corporation not licensed to do business in this State, or cannot be found in this State. INDICATE SIGNER'S RELATIONSHIP TO OWNERIAPPLICANT BELOW APPLICANT'S Town Manager SIGNED e: (Self. PPrnreside�tt. Vice- President. etc.) Subscribed and sworn to before this � day of 19 -Z (SEAL) My commission expires ��`� 31 iNOT.4RY PUBLIC) \4 � To. From: Phone (Area Code) No. Telephoned Stopped By Message Left With Me: CALLS File No. Date: Time: Extension Please Call Urgent Returned Your Call Will Call Again Made App't. for (Date and Time By: - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - Returned Call - Date Date Date - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - NnmFc International schedule of classes of goods and services Goods 1 Chemicals products used in industry, science, photography, agricul- ture,-horticulture, forestry; artificial and synthetic resins, plastics in the form of powders, liquids or pastes, for industrial use; manures (natural and artificial); fire extinguishing compositions; tempering substances and chemical preparations for soldering; chemical sub- stances for preserving foodstuffs; tanning substances; adhesive sub- stances used in industry. 2 Paints, varnishes, lacquers; preservatives against rust and against dete- rioration of wood, colouring matters, dyestuffs; mordants; natural resins; metals in foil and powder form for painters and decorators. 3 Bleaching preparations and other substances for laundry use; cleaning, polishing, souring and abrasive preparations; soaps; perfumery, essen- tial oils, cosmetics, hair lotions; dentifrices. 4 Industrial oils and greases (other than oils and fats and essential oils); lubricants; dust laying and absorbing compositions; fuels (including motor spirit) and illuminants; candles, tapers, night lights and wicks. 5 Pharmaceutical, veterinary, and sanitary substances; infants' and invalids' foods; plasters, material for bandaging; material for stopping teeth, dental wax, disinfectants: preparations for killing weeds and destroying vermin. 6 Unwrought and partly wrought common metals and their alloys; anchors, anvils, bells, rolled and cast building materials; rails and other metallic materials for railway tracks; chains (except driving chains for vehicles), cables and wires (nonelectric); locksmiths' work; metallic pipes and tubes; sales and cash boxes, steel walls; horseshoes; nails and screws; other goods in nonprecious metal not included in other classes; ores. 7 Machines and machine tools; motors (except for land vehicles); machine couplings and belting (except for land vehicles); large size agricultural implements; incubators. 8 Han d tools and instruments; cutlery, forks, and spoons; side arms. 9 Scientific, nautical, surveying and electrical apparatus and instruments (including wireless), photographic, cinematographic, optical, weigh- ing, measuring, signaling, checking (supervision), life- saving and teaching apparatus and instruments; coin or counterfreed apparatus; talking machines; cash registers; calculating machines; fire extinguish- ing apparatus. 10 Surgical, medical, dental, and veterinary instruments and apparatus (including artificial limbs, eyes and teeth). 11 Installations for lighting, beating, steam generating, cooking, refriger- ating, drying, ventilating, water supply, and sanitary purposes. 12 Vehicles; apparatus for locomotion by land, air or water. 1 2 Firearms; ammunition and projectiles; explosive substances; fire- ) works. 14 Precious metals and their alloys and goods in precious metals or coat- ed therewith (except cutlery, forks and spoons); jewelry, precious stones, horological and other chronometric instruments. 1 5 Musical instruments (other than talking machines and wireless appara- tus). 1 6 rPaper and paper articles, cardboard articles; printed matter, newspaper and periodicals, books; bookbinding material; photographs; stationery, adhesive materials (stationery); artists materials; paint brushes; type- writers and office requisites (other than furniture); instructional and teaching material (other than apparatus); playing cards; printers' type and cliches (stereotype). 1 �'] Gutta percha, india rubber, balata and substitutes, articles made from / these substances and not included in other classes; plastics in the form of sheets, blocks and rods, being for use in manufacture; materials for packing, stopping or insulating; asbestos, mica and their products: hose pipes (nonmetallic). 1 Q Leather and imitations of leather, and articles made from these materi- O als and not included in other classes; skins, hides; trunks and traveling bags: umbrellas. parasols and walking sticks; whips. hamess and sad- dlery. 1 (� Building materials, natur-_ nd artificial stone, cement, lime, mortar, 7 plaster and gravel; pipes of earthenware or cement; roadmaking mate- rials; asphalt, pitch and bitumen; portable buildings; stone monu- ments; chimney pots. 20 Furniture, mirrors, picture frames; articles (not included in other class- es) of wood, cork, reeds, cane, wicker, horn, bore, ivory, whalebone, shell, amber, mother -of -pearl, meerschaum, or of plastics. 2 1 Small domestic utensils and containers (not of precious metals, or 1 coated therewith); combs and sponges; brushes (other than paint brushes); brushmaking materials; instruments and material for clean- ing purposes, steel wood; unworked or semi- worked glass (excluding glass used in building; glassware, porcelain and earthenware, not included in other classes. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks; padding 22 and stuffing materials (hair, kapok, feathers, seaweed, etc); raw fibrous textile materials. 23 Yams, threads. 24 Tissues (piece goods); bed and table covers, textile articles not includ- ed in other classes. Clothing, including boots, shoes and slippers. 25 2 L Lace and embroidery, ribands and braid; buttons, press buttons, hooks u and eyes, pins and needles; artificial flowers. 27 Carpets, rugs, mats and matting; linoleums and other materials for covering existing floors; wall hangings (nontextile). 28 2 Q Games and playthings; gymnastic and sporting articles (except cloth- ing); ornaments and decorations for Christmas trees. 29 Meats, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and other dairy products; edible oils and fats; preserves, pickles. 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking powder, salt, mus- tard, pepper, vinegar, sauces, spices; ice.. 31 Agricultural, horticultural and forestry products and grains not includ- ed in other classes; living animals; fresh fruits and vegetables; seeds; live plants and flowers; foodstuffs for animals, malt. Beer, ale and porter, mineral and aerated waters and other nonalco- 3 2 holic drinks; syrups and other preparations for making beverages. 33 Wines, spirits and liqueurs. 34 Tobacco, raw or manufactured; smokers' articles; matches. Services 35 Advertising and business. 36 Insurance and financial. 37 Construction and repair. 38 Communication. 39 Transportation and storage. 40 Material treatment. 41 Education and entertainment. 42 Miscellaneous. TRCV BY:Xerox Telecopier 7021 ; 6— 3-92 + 2:32PM UU UJ JL UL. JJ ilut l nv1a1 lvwty vi nvviv i post -It "" brand fax transmittal �rm4m.0611 "� CCITT ECM4C0SGRIFDUNNABPLANALPi# i N:' 1325129 THE UNITED STATES OF AMERICA CERTIFICATB OF REGISTRATION This is to certify that the records of the Patent and Trademark Office show that an application was filed in said Office for registration of the Mark shown herein, a copy of said Mark and pertinent data from the Application being annexed hereto and made a part hereof, And there having been due compliance with the requite- ernents of the law and with the regulations prescribed by the Commissioner of Patents and Trademarks, Upon examination, it appeared that the applicant was erbtitled to have said Mark registered under the Trademark Act of 1946, and the said Mark has been duly registered this day in the Patent and Trademark Office on the PRINCIPAL REGISTER to the tegistrant named herein. This registration shall remain in force for Twenty Years unless sooner terminated as provided by law. In Testimony Wheteof I have hereunto set my hand and caused the seal of the Patent and Trademark Office to be affixed this twelfth day of March, 1985, Acting Coinmissioner of Patents and Trademarks RCV BY :Xerox Tele`copier 7021 ; 6— 3 -92 ; 2 :32PM ; Uu uU �L UG,Jl 11x1 rllvlri iuNq AvUu r•� CCITT ECM-►COSGRIFDUNNABPLANALP;# 2 1 UL l NOTICE This Regiorataou will k caxctlod by tht Corswiuiomr of Pais ws m d Trad*wrr* at the and of six ymrs f llawi,r,f for dater of radttraugiaa, arslixs "&W OW y&" M" ^&AV d* "*& a of A" mr 9'"", Abe M&rdt files it the 1dW@w and Trademst -A Office air lff d&,* shming that said Mari it in wo 4 commorct or shriving that ib Nomm it dwt Al special dremmAmm which txcaue Mch ,r "w and is prat due b any farm tax to abot4m tht XW4. A fee a/ $100.00 for each clots now accompany eht affidavit. a 'RCV BY:Xerox Telecopier 7021 ; 6— 3 -92 2:32PM UU UJ 114, UL - Jl 11A 11AUJ1 11J1114 V, f1YV1U .w Int. Cl.- 42 CCITT ECM-►C05GRIFDUNNA.BPLANALP;# 3 1 UJ Prior U.S. CL-8 100 Reg. No. 1,325,129 United States patent and Trademark Office !ggsww ice. X2,1 SERVICE MARIA Principal Register Town of Avon (Colcrado cotpozatiou) P.O. Box 975 Avon, Colo. 81620 For, MUNICIPAL GOVERNMENT SERVICES, in CLASS 42 (U.S. Cl. 100). First use Nov. 15, 1982; in commerce Nov. 15, 1982. No claim is made to the exclusive right to use "Avon ", &pact from the mark as shown. The lining is a fWure of the mark and does not indicate color. Ser. No. 483,671, 81ed Jun. 4, 1984. MARY I. SPARROW, Examining Attoruey RGV BY ;Xerox Telecopier 7021 ; 6- 3 -92 ; 2:32PM ; CCITT ECM-+C05GRIFDUNNABPLANALP;# 4 UU UJ -% UL. it "A I'AVIVi iolrw k,a.. mull I L14 LAW OFF1crs COSGRIFF. DUNN & ABPL.ANALP A PARTNLRSHIP of ARCIrCSSIONAL CONJOCRATIONti P. O. BOX 340 P[TER VAIL,Et:1.0RA 00 8ff55E+ 4a9vRIMRj CiUNlV &BERRY JOHN W. DUNK ARTHUR A.ABPLA4NALR JR. !3031 4745-753F P.O. BOX If TIMOTHY H.6ERPIY LEA5VILLE,COL0RA00 eo4el ALLEN C. CHRISTENSEN (30.3) 466.1965 March 21, 1985 Mr. William James Town Manager Town of Avon Post Office Box 975 Avon, Colorado 81520 Re: Town of Avon Trademark Dear Mr. James, Enclosed please find a Certificate of Registration and Reigstration number for the Town of Avon's trademark. Please retain this document in your files for safe- keeping. Very truly yours, 00'W 1 Ging x G. Tofferi /ggt Secretary ,Enclosure F C r MO HAR 2 2 '1985 y° RCV B`:Xerox Telecopier 7021 ; 67 3 -92 JU UJ �L UL. Jy !!'.1 i AUX 1VIVA % riYV1V PE76R COSO iIFr JOHN W. DUNN ROBERT H.6. FAfNCH S'7SrHEN C. WEST TIMOTHY H. BERRY ARTHUR A.ADPLANALAR JR, JOHN N. W000 FREOCRICK 5.54)LLEF1N 2 :33PM ; CCITT ECM-IC05GRIFDUNNABPLANAuP;# 5 LAW OFFICES COSGRIFF, DUNN & FRENCH, P. C, F'P, CJ, 60x 340 VAIL, COLom^oo 61656 (303) 476 -7552 30 May 1984 The Commissioner of Patents and Trademarks Washington, D.C. 20231 Rs: Town of Avon Trademark Application Dear Sir: LEApy1LLC OFFICE, R O, sox 11 LCA0VI1,L9,C01-ORA00 60461 (3031 499 -1a®r. sRCCKr6NRIoOE OFFICC, R 0. eox 696 sR9CkCNRI0GE,C0LORA00 40444 (3030 483.2401 In March of 1983, this office submitted to Your office a trademark application on behalf of the Town of Avon, Colorado. That application was returned because of a number of deficiencies. We desire to resubmit that application and therefore enclosed the following materials: 1. Trademark Application Form PTO -1376 (4-82) of the Town of Avpn, Colorado; 2. Five specimens showing the mark as actually used; 3. A drawing which we believe will meet the requirements Of Your office; and 4. Our check in the amount of $175.00, the registration fee. If you need any further information, please do not hesitate to contact me. All correspondence and inquiries regarding this application should be directed to me as mown Attorney for the Town of Avon. truli t9urV, Arthur A. Abplanalp! Jr. AAAJr:ggt Enclosures xc: Bill James Town Manager 0 RCV BY :Xerox Telecopier 7021 ; 6— 3-92 2 :33PM ; UU UJ IL UG. JZ� 11Y1 1'11V1F1 iU1114 Y atlPV1V ev) �N �,Q pdw CCITT ECM-+C05GRIFDUNNABPLANALP;# 6 1 U U i t. J*ns s344 2. ?MS 3zvz 3 lWhAs PMS 5 BIZ _ nber ties, .'his lave fees -der �y of ests aver .in on- ;ia- ion to og- iu1 eir 3A ►m �s in BUSINESS LAW NEWSLETTER ■ Preparing and Filing Federal Intent To Use Trademark Applications by Robert C. Dorr and Christine Peterson trademark is a symbol used to identify a product and set it apart from products pro- duced by competitors. A good trademark distinguishes the prod- uct, insures consistency of quality and promotes sales of the product. As such, a trademark is a crucial business asset. Thus, federal registration of a trademark may be an important consideration. In fact; the trademark a product bears may become more important than the name of the company which created the prod- uct. This is evidenced by the well-known trademark MONOPOLY ®, which is owned by Parker Brothers, Inc. A good trademark sticks in the mind of consumers and represents immeasur- able goodwill. Common examples are the famous McDLV, MAYTAG@ and TEXA- COO marks. Because a good trademark is an asset of unquestionable worth, ob- taining a federal or state trademark for a product or service should be a carefully considered legal route. This article dis- cusses federal trademark registration and gives a line -by -line explanation of the application form that shows a compa- ny's intent to use a trademark. Appen- dices A and B to this article are examples of a completed application and "drawing" of the trademark. Column Ed.: Jill B. W. Sisson of Bearman & Talesnick, Denver - 572 -6500 Trademark Registration Trademarks currently are protected under three different bodies of law. First, common law trademarks are not regis- tered in any manner, but legal rights are acquired through actual use in a specific geographical area. Second, each of the fifty states also registers trademarks, thereby offering protection of a mark within that state. This registration system is most com- monly used by small businesses which operate exclusively within state bound- aries and that do not ship products across state lines. State registration usually is sufficient if a business does not intend to expand. Third, trademarks may be feder- ally registered. Intent to Use a Trademark Prior to the Trademark Revision Act of 1988 ( "1988 Act "), trademarks could not be federally registered until they were actually used on a product or service in interstate commerce. This requirement was contrary to most international trade- mark systems, which allowed registra- tion based on an intent to use. However, the 1988 Act changed the U.S. system by allowing an applicant to reserve a mark that it "intends to use" for a product or service. The 1988 Act has permitted the filing of an intent -to -use application since November 16, 1989, the effective date of the 1988 Act. The new law requires a "bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce."' A mark can- not be registered with no intention of use. The requirement of a bona fide intention serves to preclude the registra- tion of a mark just to prevent its use by competitors. It also prevents warehous- ing of marks. The intent -to -use trademark applica- tion is not officially registered until a statement of use actually is filed. This statement must be filed within six months of the issuance of the Notice of Allowance by the Patent and Trademark Office. However, extensions of time may be obtained to stretch this period up to twenty -four months. This effectively per- mits an applicant to reserve a trademark for almost three years prior to using it and presumably allows an applicant suf- ficient time for product development. Zb obtain a federally registered trade- mark based on an intention to use, a trademark application must be submit- ted to the Commissioner of Patents and Trademarks, Washington, D.C. 20231; This newsletter is prepared by the Business Law Section of the Colorado Bar Association to apprise members of the Bar of current information con- cerning substantive areas of business law. This month's column was written by Robert C. Dorr, a partner, and Christine Peterson, a patent agent, of the Denver firm of Dorr, Carson, Sloan & Peterson. 2424 n THE COLORADO LAWYER (703) 557 -3080. At present, the fee for fil- ing a trademark application is $175 per class. The goods and services for trade- marks are broken down into a set of classes (such as "printed publications "). Usually, a trademark is used on a good or service that falls within one class. The application itself consists of two parts: (1) a "drawing" of the mark and (2) completion of Trademark Application Form 1478 as published by the Patent and Trademark Office (or a compatible form). The drawing illustrates the mark that the applicant intends to register. Line -by -Line Completion Of Form 1478 Completion of Form 1478 is detailed below. Appendix A shows a completed Form 1478 for a hypothetical company and its product. Line A On line A of Form 1478, the applicant is asked to identify the trademark re- quested. The requested trademark should be inserted here in its exact form. For example, if the mark is to combine capital and lower case letters, it should be written in this exact form. If it includes a design and stylized let- ters, the descriptor "and Design" should be added. For example, on line A of Ap- pendix A, the trademark "TOAD ZAP- PER" is followed by the words "and Design." Again, unless small letters are an intended part of the mark, the entire mark should be shown in capital letters. Line B Line B of the form asks for "class num- ber'' the international classification for the goods or services in question. This classification can be obtained from the U.S. Patent and Trademark Office. If the class is unknown, this line may be left blank and the Trademark Office person- nel will suggest a classification. "Class 42," shown in Appendix A corresponds to "Miscellaneous." Lines C and D Line C of the form should contain the applicant's entire legal name, such as DENVER LAW, INC., as shown in the example. If it is available, a complete street address —in lieu of a P.O. Box address — should be given on line D. Lines E through H Lines E through H ask the applicant to identify its entity (individual, partner- ship or corporation) and the state and county in which the applicant is based. Line I The identification of the goods or serv- ices that will be represented by the trademark is set forth in Line I. The applicant should insert an exact and con- cise description of the goods or services that are to be identified by the mark. For example, the goods might be horse feed, furniture or computer products such as diskettes and computer programs. Ex- amples of services are daycare or resi- dential cleaning. "The Trademark Revision Act of 1988 allows an applicant to reserve a mark that it `intends to use' for a product or service." Lines J through M Lines J through M ask the applicant to identify what type of application is being made. The instructions state that the applicant may check one or more boxes but not both the first and second boxes. The amount of information the applicant must supply depends on the box that is checked. Line J concerns "actual use" applica- tions: situations in which the mark al- ready is being used in commerce, al- though it has not yet been registered. However, because this article focuses on intent -to -use applications, the reader's attention is directed to boxes K through M, which identify several types of intent - to-use applications. Line K is to be checked by applicants who have a bona fide intention to use the mark in commerce but have not done so yet. This is the box that U.S. applicants will check. On the line provided, the applicant should specify the manner or mode of use of the mark in connection with the goods or services. For products, this typically is designated by the phrase "labels attached to the product." Line L indicates an intent -to -use trademark application that asserts a claim of priority based on a foreign appli- cation in accordance with 15 U.S.C. § 1126(d), as amended. If the applicant has filed a foreign application in accordance with the 15 U.S.C. § 1126(d) guidelines, the applicant is entitled to the use of that foreign filing date. The country and date f Decembe of foreign filing must be inserted wher indicated. Finally, Line M identifies an intent -tt use trademark application in which th mark already has been registered in foreign country. In this instance, th applicant is asked to attach a certifie, copy of the foreign registration and to hE the country of registration and registre tion number for the mark. This completes side one of the applict tion. The reverse side of the applicatio also must be completed, but it is nc shown in this article because it require only the Declaration and signature line, Drawing of the Trademark The drawing of the mark is a one -pag typed document that is completed in & manner shown in Appendix B. Line. discloses the legal name of the applican This is followed by the applicant's ac dress in line B. The applicant shoul insert the complete address, using tb street address, instead of'a post office be number, if it is available. Line C shows the international class fication of the goods or services that w to be identified by the trademark. Line indicates the use of the mark. The atto neys who represent the applicant ai listed on Line E, along with their addrec and telephone number. The drawing of the actual trademai is presented in the middle of the page. words are to be registered without ar particular arrangement, a capitalizE typing of the words constitutes a con plete drawing. However, if a stylized rej dition of the words or a design is to l registered, the exact presentation of tl design must be shown here. It is essential that the drawing be pr sented in the exact manner that tl applicant wants registered. In particult every line and letter must be blac clean, sharp, solid and not fine or crow ed. The mark must be displayed in t area no larger than 4" x 4 ". The drawn may be done on the typewriter or wa processor (in pica, elite or larger type), by any other means which will displ; the mark in a manner which will reps duce satisfactorily. The mark must 1 produced with a carbon ribbon or throw a process that provides clarity and cc trast at least equal to carbon -ribbi quality. All the information on the "drawin form must match exactly the informati, presented on Form 1478 or the apph( tion will be rejected by the tradema examiner. An identical presentation 1990 data is required on both pieces of the application. Conclusion Because of the value of a good trade- mark, companies involved in interstate commerce should consider the benefits of' obtaining a trademark for their products or services. Federal law now allows in- tent -to -use applications for marks that B- -'[NESS LAW NEWSLETTER have not yet been put into use. The infor- mation contained in this article and its appendices should aid in careful comple- tion of the intent -to -use application. NOTES 1. 15 U.S.C. § 1051(2X6) (1990),'Il-ademark Revision Act of 1988. See appendices, next page. SOME OF THE BEST MANAGERS IN THE WORLD HAVE DIABETES. Controlling glucose levels is the management challenge of a lifetime. There are blood tests to conduct, exercise routines to plan, and special meals to prepare. And for nearly one million Americans with insulin - dependent diabetes, daily injections to administer. Not to mention coping with the stress of know- ing diabetes can lead to heart disease, kidney disease, and blindness. For all the work they do, people with diabetes deserve more than a pat on the back. They deserve a cure. Support the research of the American Diabetes Association. American Diabetes Association. This advertisement donated by the publisher. 2425 investigators�ll RONALD B. Rorw{tllTnomrn -F 110MAS C.L.I. INVESTIGATIONS PERSONAL INJURY INVESTIGATOR • Detailed Witness Statements • Photography • Professional Malpractice • Analysis • Comprehensive Reports CIVIL CRIMINAL • Financial & Personal Background Investigations • Serving Colorado for 25 Years • Member of the National Assoc. of Legal Investigators CERTIFIED LEGAL INVESTIGATOR 875 So. Colorado lilvd., Ste. 666 Denver, CO 80222 Denver (3113) 231- (119(1 Evergreen (303) 671 -6295 TRADEMARK & COPYRIGHT SEARCHES TRADEMARK - Supply word and /or design plus goods or services. SEARCH FEES: COMBINED SEARCH — $ 205+ TRADEMARK OFFICE - $70* STATE TRADEMARKS - $75 COMMON LAW - $65 EXPANDED COMMON LAW - $115* DESIGNS - $95* per class minimum COPYRIGHT - $105* *plus photo copy cost. INTERNATIONAL SEARCHING DOCUMENT PREPARATION (for attorneys only - Applications, Section 8 & 15, Assignments, renewals.) RESEARCH - (SEC - 1OK's, ICC, FCC, COURT RECORDS, CONGRESS) APPROVED. Our services meet standards set for us by a D.C. Court of Appeals Committee. Over 100 years total staff experience - not connected with the Federal Government. GOVERNMENT LIAISON SERVICES,INC. 3030 Clarendon Blvd., Suite 209 Arlington. VA 22201 Phone: (703) 524 -8200 Fax: (703) 525 -8451 All major credit cards accepted TOLL FREE: 800 -642 -6564 Since 1957 2426 /� THE COLORADO LAWYER � Deceini C. D. E. F. G H I. J K 1 APPENDIX A TRADEMARK/SERVICE MARK CLASS NO. (IF KNOWN) A. TOAD ZAPPER and Design APPLICATION, PRINCIPAL REGISTER, WITH DECLARATION CLASS NO. (IBKNOWN) 42 TO THE ASSISTANT SECRETARY AND COMMISSIONER OF PATENTS AND TRADEMARKS: APPLICANT NAME: DENVER LAW, INC. APPLICANT BUSINESS ADDRESS: Suite 40,000, Sherman & Hart Tower, Denver, CO 80001 APPLICANT ENTITY: (Check one and supply requested information) Individual - Citizenship: (Country) Partnership - Partnership Domicile: (State and Country) Names and Citizenship (Country) of General Partners: Corporation - State (Country, if appropriate) of Incorporation: Colorado Other: (Specify Nature of Entity and Domicile) GOODS AND /OR SERVICES: Applicant requests registration of the above - identified trademark/service mark shown in the accompanying drawing in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. 1051 et. seq., as amended) for the following /services: Legal Accounting Software goods BASIS FOR APPLICATION: (Check one or more, but NOT both the first AND second boxes, and supply requested information) 0 Applicant is using the mark in commerce or in connection with the above identified goods /services. (15 U.S.C. 1051(a), as amended.) Three specimens showing the mark as used in commerce are submitted with this application. • Date of first use of the mark anywhere: • Date of first use of the mark in commerce which the U.S. Congress may regulate: • Specify the type of commerce: (e.g., interstate, between the U.S. and n specified foreign country) • Specify manner or mode of use of mark on or in connection with the goods /services: (e.g., trademark is applied to labels, service mark is used in advertisements) Applicant has a bona fide intention to use the mark in commerce on or in connection with the above identified goods /services. (15 U.S.C. 1051(b), as amended.) • Specify intended manner or mode of use of mark on or in connection with the goods /services: labels attached to floppy diskettes (e.g., trademark is applied to labels, service mark is used in advertisements) Applicant has a bona fide intention to use the mark in commerce on or in connection with the above identified goods /services, and asserts a claim of priority based upon a foreign application in accordance with 15 U.S.C. 1126(d), as amended. • Country of foreign filing: • Date of foreign filing: A Applicant has a bona fide intention to use the mark in commerce on or in connection with the above identified goods /services and, accompanying this application, submits a certification or certified copy of e foreign registration in accordance with 15 U.S.C. 1126(e), as amended. • Country of registration: • Registration number: Note: Declaration, on Reverse Side, MUST be Signed PTO Form 1478 (REV. 9/39) U.S. DEPARTMENT OF COMMERCE Patent and Trademark Wit OMB No. 06510009 Exp. 5 -31 -91 1990- BJ NESS LAW NEWSLETTER APPENDIX B A. APPLICANT: DENVER LAW, INC. B. ADDRESS: Suite 40,000 Sherman & Hart Tower Denver, Colorado 80001 C. INT'L CLASS: 42 D. USE: Legal Accounting Software E. ATTORNEYS: Robert C. Dorr DORR, CARSON, SLOAN & PETERSON 3010 East 6th Avenue Denver, Colorado 80206 (303) 333 -3010 Student Legal Services Program Seeks Referral Attorneys 2427 The Tri- Institutional Student Legal Services program at the Denver Auraria campus is seeking referral attorneys willing to provide legal services on a low -fee or reduced -fee basis to students of Metropolitan State College, University of Colorado at Denver and Community College of Denver. If interested, please send for an application: Tri- Institutional Student Legal Services, 1006 11th St., Box 39, Denver, CO 80204. 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