Administrative Code

Virginia Administrative Code
Title 21. Securities and Retail Franchising
Agency 5. State Corporation Commission, Division of Securities and Retail Franchising
11/13/2019

Chapter 120. Virginia Trademark and Service Mark Act

Part I
General Administration

21VAC5-120-10. Definitions.

As used in the Virginia Trademark and Service Mark Act (1998), the following regulations and forms pertaining to trademarks and service marks, and instructions of the State Corporation Commission, the following meanings shall apply:

"Act" means the Virginia Trademark and Service Mark Act (1998) contained in Chapter 6.1 (§ 59.1-92.1 et seq.) of Title 59.1 of the Code of Virginia.

"Application" means all information required by the forms prescribed by the State Corporation Commission as well as any additional information required by the State Corporation Commission and any required fees.

"Commission" means the State Corporation Commission.

"Division" means the Securities and Retail Franchising Division of the State Corporation Commission.

"Exhibit" means an image or drawing of the mark on a separate sheet of paper without any extraneous markings.

"Mark" means any trademark or service mark entitled to registration under the Act, whether registered or not.

"Specimen" means evidence demonstrating use, as that term is defined in § 59.1-92.2 of the Act, of a mark in the ordinary course of trade in the Commonwealth of Virginia.

Statutory Authority

§§ 12.1-13 and 59.1-92.19 of the Code of Virginia.

Historical Notes

Derived from Virginia Register Volume 14, Issue 22, eff. July 1, 1998.

21VAC5-120-20. Authority; severability.

A. Pursuant to the authority granted by Chapter 6.1 (§ 59.1-92.1 et seq.) of Title 59.1 of the Code of Virginia, the following regulations and forms regarding the administration and implementation of the Virginia Trademark and Service Mark Act (1998) have been adopted.

The intent of these regulations and forms is to supplant written and unwritten administrative policies. The division, acting by such person or persons as the division director may designate, shall have authority to perform all acts under the Act which the State Corporation Commission itself could perform but subject to review by the State Corporation Commission under its Rules of Practice and Procedure (5VAC5-20).

B. Should any provision or application of these regulations be held invalid, such invalidity shall not affect other provisions which can be given effect without the invalid provision, and to this end the provisions or applications of these regulations and forms are declared to be severable.

Statutory Authority

§§ 12.1-13 and 59.1-92.19 of the Code of Virginia.

Historical Notes

Derived from Virginia Register Volume 14, Issue 22, eff. July 1, 1998.

21VAC5-120-30. Classification of regulatory standards.

Regulations are regulatory standards adopted and promulgated and shall be considered the highest level of policy applied by the State Corporation Commission.

Forms are prescribed or adopted for the purpose of implementing the Act. When so prescribed or adopted, use of the forms is mandatory.

Statements made orally or in writing by personnel of the division or other State Corporation Commission personnel in response to inquiries or otherwise and not specifically identified and promulgated as regulations shall not be considered regulatory standards of the State Corporation Commission and shall not be considered binding upon the State Corporation Commission in connection with specific decisions undertaken by the State Corporation Commission thereafter. The State Corporation Commission may refuse to answer any question based upon a hypothetical situation.

Statutory Authority

§§ 12.1-13 and 13.1-523 of the Code of Virginia.

Historical Notes

Derived from Virginia Register Volume 14, Issue 22, eff. July 1, 1998; amended, Virginia Register Volume 15, Issue 22, eff. July 1, 1999.

21VAC5-120-40. Application of regulations.

All regulations shall be applied collectively, to the extent relevant, in connection with specific determinations made by the division or the State Corporation Commission in the course of administering the Act. The captions of these regulations are for convenience only. Should there be a conflict between the caption and the text of a regulation, the text will control.

Because regulations and forms cannot adequately anticipate all potential application requirements, the failure to satisfy all regulatory standards of the State Corporation Commission will not necessarily foreclose the possibility of a favorable disposition of a matter pending before the State Corporation Commission, and similarly will not necessarily preclude an unfavorable disposition if the specific characteristics and circumstances so warrant.

Statutory Authority

§§ 12.1-13 and 59.1-92.19 of the Code of Virginia.

Historical Notes

Derived from Virginia Register Volume 14, Issue 22, eff. July 1, 1998.

Part II
Registration and Protection of Trademarks and Service Marks

21VAC5-120-50. Application for registration.

A. Application for registration of a mark shall be filed with the division on and in full compliance with forms prescribed by the State Corporation Commission and shall include all information required by such forms.

B. An application shall be deemed incomplete for purposes of applying for registration unless the following executed forms, fee and information are submitted:

1. Executed and notarized Form TM 1, Application for Registration of a Trademark or Service Mark.

2. The registration fee in the amount of $30 per classification requested. The check shall be made payable to the Treasurer of Virginia.

3. A specimen of the mark as used by the applicant as defined in § 59.1-92.2 of the Act.

4. An exhibit of the mark.

5. Classification of the mark as defined in 21VAC5-120-100.

6. Any other information the State Corporation Commission may require.

C. Pursuant to § 59.1-92.6 of the Act, the director of the division shall make all final registration decisions. Pursuant to § 59.1-92.5 E of the Act, once the staff has made its final determination to refuse to register a mark, an applicant may file a written request with the director for a review of the staff's decision. If the director determines that a registration should be refused, the application is considered finally refused pursuant to § 59.1-92.5 E of the Act. The applicant shall be notified of the basis for the final refusal. The final refusal may be reviewed in accordance with the commission's Rules of Practice and Procedure, 5VAC5-20.

Statutory Authority

§§ 12.1-13 and 59.1-92.19 of the Code of Virginia.

Historical Notes

Derived from Virginia Register Volume 14, Issue 22, eff. July 1, 1998; amended, Virginia Register Volume 20, Issue 1, eff. September 2, 2003.

21VAC5-120-60. Expiration.

The registration of a mark shall be effective for a term of five years from the date of registration. The registration will expire if not renewed within six months prior to the expiration date.

Statutory Authority

§§ 12.1-13 and 59.1-92.19 of the Code of Virginia.

Historical Notes

Derived from Virginia Register Volume 14, Issue 22, eff. July 1, 1998.

21VAC5-120-70. Renewals.

An application for renewal of the registration must be filed within six months prior to the expiration date of the registration. A registration may be renewed for a five-year period from the date of expiration upon receipt of a completed application on Form TM 2, Application for Renewal of Registration of a Trademark or Service Mark, a specimen of the mark as used at the time the renewal application is filed, and the $30 renewal fee per classification made payable to the Treasurer of Virginia.

Statutory Authority

§§ 12.1-13 and 59.1-92.19 of the Code of Virginia.

Historical Notes

Derived from Virginia Register Volume 14, Issue 22, eff. July 1, 1998.

21VAC5-120-80. Assignments and name change.

A. Any mark and its registration shall be assignable with the good will of the business in which the mark is used or with that part of the good will of the business connected with the use of and symbolized by the mark. Assignments shall be by instruments in writing duly executed and may be filed with the State Corporation Commission upon payment of a $30 fee made payable to the Treasurer of Virginia.

B. An applicant or registrant, as the case may be, effecting a change of name may file a Certificate of Name Change of an Applicant or Registrant, Form TM 3, with the State Corporation Commission upon payment of a $30 fee made payable to the Treasurer of Virginia.

Statutory Authority

§§ 12.1-13 and 59.1-92.19 of the Code of Virginia.

Historical Notes

Derived from Virginia Register Volume 14, Issue 22, eff. July 1, 1998.

21VAC5-120-90. Cancellation procedures.

Proceedings upon petitions filed with the commission pursuant to § 59.1-92.10 A 3 of the Code of Virginia shall conform, as nearly as practicable, to the State Corporation Commission's Rules of Practice and Procedure (5VAC5-20).

Statutory Authority

§§ 12.1-13 and 59.1-92.19 of the Code of Virginia.

Historical Notes

Derived from Virginia Register Volume 14, Issue 22, eff. July 1, 1998.

Part III
Classification of Goods and Services

21VAC5-120-100. Classification of goods and services.

The application for registration or renewal of registration of a mark shall identify the class or classes of goods or services with which the mark is actually being used. The following classes of goods and services are established for convenience of administration of the Act:

Goods.

1. 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; and adhesives used in industry.

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

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

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

5. 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; and fungicides and herbicides.

6. 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; and ores.

7. 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; and incubators for eggs.

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

9. Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving 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; and fire-extinguishing apparatus.

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

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

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

13. Firearms; ammunition and projectiles; explosives; and fireworks.

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

15. Musical instruments.

16. 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); printer's type; and printing blocks.

17. 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; and flexible pipes not of metal.

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

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

20. Furniture, mirrors, and picture frames; and 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.

21. Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semiworked glass (except glass used in building); and glassware, porcelain and earthenware not included in other classes.

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

23. Yarns and threads for textile use.

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

25. Clothing, footwear, and headgear.

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

27. Carpets, rugs, mats and matting; linoleum and other materials for covering existing floors; and wall hangings (nontextile).

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

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

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

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

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

33. Alcoholic beverages (except beers).

34. Tobacco, smokers' articles; and matches.

Services.

35. Advertising; business management; business administration; and office functions.

36. Insurance, financial affairs; monetary affairs; and real estate affairs.

37. Building construction; repair, and installation services.

38. Telecommunications.

39. Transport; packaging and storage of goods; and travel arrangement.

40. Treatment of materials.

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

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

43. Services for providing food and drink; and temporary accommodations.

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

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

Statutory Authority

§§ 12.1-13 and 59.1-92.19 of the Code of Virginia.

Historical Notes

Derived from Virginia Register Volume 14, Issue 22, eff. July 1, 1998; amended, Virginia Register Volume 26, Issue 6, eff. November 15, 2009.

Part IV
Forms for Trademarks and Service Marks [Repealed]

21VAC5-120-110. [Repealed]

Historical Notes

Derived from Virginia Register Volume 14, Issue 22, eff. July 1, 1998; amended, Virginia Register Volume 15, Issue 17, eff. July 1, 1999; repealed, Virginia Register Volume 15, Issue 22, eff. July 1, 1999.

Forms (21VAC5-120)

Form TM 1, Application for Registration of a Trademark or Service Mark (eff. 11/09).

Form TM 2, Application for Renewal of Registration of a Trademark or Service Mark (eff. 11/09).

Form TM 3, Certificate of Name Change of an Applicant or Registrant (eff. 11/09).



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