500.22 - Trademarks

By Survey Manual

OPR: Office of Policy and Analysis

Instruction: This is a new Survey Manual (SM) chapter.

1. Purpose. This SM chapter establishes the U.S. Geological Survey (USGS) policies, requirements, and responsibilities to use and (or) acquire a trademark, to allow a non-USGS party to use a USGS trademark, and for USGS to use a trademark owned by a non-USGS party.

2. Scope. This SM chapter applies to all USGS employees, volunteers, and contractors.

3. Authorities.

A. Lanham (Trademark Act) of 1946, as amended, Title 15 U.S.C. § 1051, et seq.

B. Emblems, Insignia, and Names, Title 18, U.S.C., chapter 701

C. The Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. § 3710a) as amended in 1986, 1988, 1989, 1995, and 2000.

D. Departmental Manual (DM), 209 DM 3, Solicitor

E. SM 500.20, Technology Transfer Authority

4. References.

A. SM 550.1, USGS Visual Identity System

B. SM 1100.3, USGS Publication Series

C. SM 1100.6, Use of Copyrighted Material in USGS Information Products

D. SM 205.1, Personnel Management

E. SM 502.1, Fundamental Science Practices: Foundation Policy

5. Definitions.

A. Principal Investigator. A principal investigator (PI) is an individual who authors or serves as the lead for research or an initiative as designated by a Center or Mission Area.

B. Trademark. A trademark (Mark) is a brand identifier. A Mark may include any word, name, symbol, logo, device, or any combination of which is used or intended to be used to identify and distinguish the goods or services of one seller or provider from those of others. The law requires a Mark to be used in commerce, and in a manner that indicates the source or origin of the goods or services. Common law rights are established through use of the Mark while Federal protection is obtained through registration at the U.S. Patent and Trademark Office (USPTO).

6. Policy.

A. Creating or Registering a Mark. A Mark may be used and (or) registered when there is a strong business case that use of the Mark provides a mission benefit to the USGS. Marks are reserved for use to identify products or services only. The USGS Visual Identity System identifier is the sole mark for identification of any USGS organizational entity (e.g., office, mission area, program, region, center, team).

B. Using a Non-USGS Mark. USGS must not incorporate any non-USGS-owned Mark in or on any goods or services offered by the USGS including electronic information products and publications, except with the written consent of the Mark owner.

C. Authorizing Use of a USGS Mark by a Non-USGS Party. Any non-USGS party interested in using a USGS Mark must enter a technology transfer and (or) license agreement. Licensing protects the USGS name, reputation, and image by permitting only appropriate uses. This ensures continued quality products and (or) services consistent with USGS Fundamental Science Practices. Use of the Mark may be authorized so long as it does not suggest that the USGS endorses the non-USGS party, its product(s), service(s), or a person.

D. Avoiding Unauthorized Use of a Non-USGS Mark. Unauthorized use of a non-USGS Mark may result in civil liability to an infringer, including the Federal Government. The improper use of a Mark may also result in a loss of the owner’s trademark rights. USGS must not use or incorporate a non-USGS Mark unless written permission has been obtained in advance.

7. Responsibilities.

A. The Office of Policy and Analysis (OPA) – Responsible for the following:

(1) Negotiating all royalty-bearing license agreements;

(2) Reviewing documents granting rights to use USGS’ Marks;

(3) Communicating with the Department of the Interior (DOI) Office of the Solicitor about review, negotiating, filing required trademark application documents and any correspondence pertaining to Marks, as needed;

(4) Providing final approval to Centers and Programs under the purpose of this SM chapter, which does not include USGS Visual Identity System guidelines, approvals for which are delegated to the Office of Communications and Publishing (OCAP);

(5) Assisting Centers and Programs with negotiations of non-royalty-bearing agreements in coordination with other USGS offices, as needed;

(6) Providing advice, training, and guidance on all Mark-related issues in coordination with the DOI Office of the Solicitor, as needed;

(7) Assisting Centers and Programs with actions to correct any misuse of a Mark; and

(8) Coordinating with USGS offices on Mark-related responses to the USPTO and DOI Office of the Solicitor.

B. The Office of Communications and Publishing – Responsible for the following:

(1) Coordinating with the OPA on the use of all Marks in advertisements and news release statements;

(2) Managing USGS Visual Identity System policies, guidance, and related approvals; and

(3) Reviewing requests to OPA for new USGS Marks to ensure compliance with USGS Visual Identity System policy.

(4) Ensuring use of non-USGS Marks in USGS publications series information products complies with USGS Visual Identity System and non-USGS Mark owner requirements.

C. Associate Directors, Regional Directors, and their designees – Responsible for ensuring the accurate and appropriate use of Marks, and for ensuring their respective Centers are aware of the policies and procedures provided in this SM chapter. They are also responsible for resolving problems that arise from the Mark usage.

D. Science Center Directors – Responsible for executing licenses, negotiating USGS use of non-USGS party Marks, and ensuring the accurate and appropriate use of Marks in all materials, including agreements under their purview. They are also responsible for ensuring approvals for the use of Marks adhere to this SM chapter. Where USGS permits a non-USGS party to use a USGS Mark, the Center Director is responsible for ensuring the Center properly records the Mark and its use. The Center Director is also responsible for taking corrective action in consultation with OPA where the use of a Mark, including use on a product or service, does not adhere to the USGS Mark standards or terms of an agreement.

E. Contracting Officers, Administrative Officers, Program Managers, and other managers, as applicable – Responsible for adhering to this SM chapter, and ensuring agreements include clauses that make any approval of a Mark contingent upon procedures in this SM chapter.

F. Publishing Managers, Editors, and Authors involved in preparing print, electronic, or other communication materials for public release – Responsible for confirming that USGS has obtained written permission for use of non-USGS Marks, and for ensuring USGS Marks are used appropriately.

G. Principal Investigator – Responsible for ensuring that USGS obtains written permission for use of non-USGS Marks.

8. General Procedures. The requesting Center must coordinate with OPA prior to using any Mark.

A. Creating and Registering a Mark.

(1) The PI must confirm in writing with Center Director that the use of the Mark supports the mission of the Center or Program.

(2) The PI must contact OPA to identify and verify the Mark’s availability and mission benefit. OPA contacts the DOI Office of the Solicitor to assess the proposed trademark’s use and registration. The DOI Office of the Solicitor notifies OPA and (or) the Center Director if there are any potentially confusing similar trademarks, conflicting, or earlier registered trademarks. Upon receipt and consideration of the DOI Office of the Solicitor’s comments, which may include a Trademark Clearance Search Report, the Center must consult with OPA on use of the requested Mark. Use of the Mark must be authorized where it is determined to be consistent with the policy in this chapter where there is no use of a same or similar Mark by another.

B. Registering a USGS Mark.

(1) To obtain a Federally registered trademark, OPA reviews the DOI Office of the Solicitor’s comments and (or) Trademark Clearance Search Report.

(2) Based on favorable search, OPA coordinates with the DOI Office of the Solicitor for registration with the USPTO.

C. Using a Non-USGS Mark.

(1) The Center must request permission directly from the Mark owner.

(2) The Center must coordinate with OPA to finalize terms of the written agreement for use of the Mark prior to being signed by both parties. OPA does not need to review the written agreement when the purpose of the Mark’s use is to advertise collaboration between the parties for a conference or publication.

(3) The Mark owner may grant permission for use of the Mark with or without a fee. The Center must coordinate with their Contracting Officer for fee payment. The Center will sign and record the agreement with the Mark owner. A copy of the agreement must be forwarded to OPA.

D. Authorizing Use of a USGS Mark to a Non-USGS Party.

(1) The Center must provide OPA and OCAP with a copy of the original request from the non-USGS party to use a USGS Mark and include an example of how the non-USGS party intends to use the Mark.

(2) OPA coordinates with the DOI Office of the Solicitor, as needed, for review of all requests and agreements pertaining to rights in Marks other than the USGS identifier. OPA consults with OCAP for clearance on the use of any Mark in advertisements or news release statements. OPA communicates denial or authorization to the Center who then communicates the decision to the non-USGS party, as appropriate.

(3) The Center, either by signed amendment to a prior agreement or by license, must provide any limitations of use of the USGS Mark to the non-USGS party.

9. Liability for Infringement. Any person that uses the same or similar Mark in commerce without permission by the Mark owner may be found liable for infringement of that Mark. USGS Centers may be liable for the unauthorized use of a non-USGS Mark by its employee acting within the scope of their employment.

10. Remedies. If a USGS Mark is being used by other parties without approval, or if the USGS is using a non-USGS Mark without written permission from the Mark owner or in a manner that is inconsistent with licensing terms, the Center must immediately contact OPA for guidance. Where USGS becomes aware of potential unauthorized use of either its Mark or another’s Mark through receipt of a cease and desist letter, this information must be provided to OPA for coordination with the DOI Office of the Solicitor in preparing or determining USGS’s response or action. Remedies for infringement of a registered Mark may include injunctive relief, actual damages, profits, costs, and attorney’s fees.

/s/ Katherine M. McCulloch 11/5/2020

____________________________ ___________

Katherine M. McCulloch Date

Associate Director for Administration