1. What is a trademark and a service mark? [Answer]
2. Is it necessary to register a trademark with the United States Patent and Trademark Office (USPTO) to establish rights to a mark? [Answer]
3. Are federal agencies required to pay the fees associated with registering a trademark? [Answer]
4. How do trademark issues usually occur at DISA? [Answer]
5. Are there any DISA policies or instructions regarding trademarks? [Answer]
6. Does DISA have guidelines providing criteria on the use of its trademarks? [Answer]
7. Does DISA currently have any trademarks registered with the USPTO? [Answer]
8. What must the agency do to maintain the registrations? [Answer]

What is a trademark and a service mark?

A trademark is a word, symbol or design, phrase, or a combination of words, phrases, symbols or designs that identifies and distinguishes the source of the goods or services of one party from those of others. A service mark is a word, symbol or design, phrase or combination of words, phrases or designs used in connection with services versus goods.

Is it necessary to register a trademark with the United States Patent and Trademark Office (USPTO) to establish rights to a mark?

No, rights in a mark can be established based on legitimate use of the mark. However, registration is advisable because owning a federal trademark registration on the Principal Register at the USPTO provides the owner with certain benefits (i.e., legal presumption of the registrant’s ownership and exclusive right to use the mark nationwide in connection with the goods and services listed in the registration).

See USPTO's Trademarks site for information on registering a trademark.  

Are federal agencies required to pay the fees associated with registering a trademark?

Generally, yes, although under Section 31 (b) of the Trademark Act, 15 U.S.C. Section 1113 (b), the USPTO may waive the fee if the agency files a petition for fee waiver.  

How do trademark issues usually occur at DISA?

A program office may wish to use a word, phrase or symbol in connection with a program or service that the agency is providing, or use a trademark or service mark owned by a company or individual in connection with an agency program.

In both cases, the General Counsel’s Office will search the USPTO’s database of registered trademarks and pending applications and other public sources to determine whether a company or individual can claim ownership in the mark. If the mark is owned by an individual or company, it may be necessary for DISA to seek permission to use it or select another mark. Always consult the General Counsel’s Office for advice regarding trademarks and service marks.   

Are there any DISA policies or instructions regarding trademarks?

Yes, DISA’s Acquisition Regulation Supplement (DARS) Section 27.9001 – “Trademark Rights Under Government Contracts” includes general guidance for addressing trademark issues in acquisition contracts.  Also, DISA’s Director’s Policy Letter 2004-7 “Developing DISA Trademarks and Service Marks (September 14, 2004) prescribes policies for developing trademarks and service marks for DISA products and services.  

Does DISA have guidelines providing criteria on the use of its trademarks?

Yes, DISA’s CIO provides guidelines (“DISA Logo and Typography Usage”) for using DISA’s logo. All uses of DISA’s logo must adhere to this document, which can be obtained from the CIO’s office. 

Does DISA currently have any trademarks registered with the USPTO?

Yes, DISA’s registered trademarks (including date of registration and class of goods and services the marks are used with) are:

DISA logo

Registration No. 3,582,348 (March 3, 2009), Class 38 (Telecommunications Services)

DEPS

Registration No. 3,730,595 (December 29, 2009), Class 35 (Contract Management Services) and Class 45 (Legal Services e.g. drafting of contracts for procurement of goods and services)

Defense Collaboration Services

Registration No. 4,144.411 (May 15, 2012), Class 38 (Telecommunications Services) and Class 42 ( non-downloadable software for application sharing, screen sharing, file transferring, voting and polling, recording and playback of multimedia recordings, and presence and awareness in the nature of user activity)

DCS

Registration No. 4192813 (August 21, 2012), Class 38 (Telecommunications Services) and Class 42 (non-downloadable software non-downloadable software for application sharing, screen sharing, file transferring, voting and polling, recording and playback of multimedia recordings, and presence and awareness in the nature of user activity)

Copies of the official registration certificates are on file in the GC’s Office.

What must the agency do to maintain the registrations?

DISA must continue to use the marks and with the goods and services identified in the registration certificates. In addition, the agency must also file a Section 8 Affidavit between the fifth and sixth years of the registration to demonstrate continued use.

DISA may also choose to file an optional Section 15 Affidavit of Incontestability declaring that the mark has been in use for a period of five years and which provides conclusive evidence of the mark’s validity in the event of trademark infringement litigation.