§ 122.702. Use of registered service mark.

(a)

A service mark which has been registered with the United States Patent and Trademark Office shall be used by City agencies only in accordance with guidelines to be contained in an executive order issued by the Mayor. The Mayor may authorize use of a registered service mark by City agencies in any manner he deems appropriate, subject to the following conditions:

(1)

The service mark may be used only to identify the using agency as an organizational unit of the City and not as an indication of the quality or type of goods or services the agency may be providing to the public.

(2)

Whenever the service mark is printed, displayed or otherwise exposed to public view, the words Registered in U.S. Patent and Trademark Office or Reg. U.S. Pat. & Tm. Off. or the symbol @ shall be displayed with and as a part of the service mark.

(3)

The service mark shall be displayed in its entirety just as it was registered with the United States Patent and Trademark Office, without the addition or omission of any part, whether words, design or registration notice.

(4)

The service mark, if it was adopted as a colored design, need not be displayed in color but, if the colored design is used, the color scheme shall be exactly the one registered with the United States Patent and Trademark Office.

(5)

If the using agency produces any goods or merchandise of any kind, whether or not such goods or merchandise is for sale to the public, the service mark may not be placed on, imprinted on or affixed to any of such goods or merchandise, or any container in which such goods or merchandise is packed, or any advertisement relating to such goods or merchandise.

(6)

If the using agency advertises the services which it provides, the service mark shall not appear on such advertisement in any fashion that would lead the public to believe that the origin, quality, reliability, mode of provision or any other characteristic of the services is being guaranteed or certified by the presence of the service mark.

(b)

Other persons, not City agencies, may use a service mark of the City only under a formal licensing agreement with the City. Before such use may be made, the following procedure shall be followed:

(1)

The person desiring to use the service mark (hereinafter referred to as the licensee ) shall make a formal written request to the City agency designated by the Mayor to receive and process such requests, which shall be a centralized agency (hereinafter referred to as the licensing agency ). The request shall be in such form as the licensing agency may specify, but it shall require that the licensee describe the use to be made of the service mark; the period of time during which the service mark will be used; the frequency of use during such time; the geographical area in which the service mark will be used; whether the license is to be exclusive or nonexclusive; whether the licensee expects to derive any profit from the use of the service mark and, if so, an estimate of the profit to be derived; and the portion of the public which will be involved in the use of the service mark by the licensee.

(2)

The licensing agency shall review the request according to procedures specified by the Mayor, and it may approve or deny the request as provided in those procedures. The licensing agency may require or permit the licensee to amend his request to counter objections raised by the licensing agency. If the licensee request an exclusive license, the licensing agency, if it intends to approve an exclusive license, shall narrow the scope of the exclusive license to the smallest possible scope consistent with the use to be made of the service mark by the licensee, and the licensee shall be required to explain in detail the reason why the license must be exclusive. If the licensee expects to derive a profit from the use of the service mark, the licensing agency shall examine and investigate the circumstances to determine the propriety of licensing the service mark for a profit-making enterprise; and there shall be a royalty arrangement whereby the City will be paid by the licensee for the profitable use of the service mark. If the licensing agency denies the request, the action is final and nonappealable, unless the Mayor provides for an administrative appeal.

(3)

If the licensing agency approves the request, with or without additional conditions as it deems appropriate, a licensing agreement shall be prepared by the Office of General Counsel, setting out the terms and conditions upon which the service mark will be used by the licensee, and shall be submitted to the Council for its approval before the licensing agreement shall become effective. In no case whatsoever shall any licensing agreement delegate, or purport or attempt to delegate, to the licensee any authority or right to license the use of the service mark by any other person than the licensee, or to use any service mark owned and controlled by the City other than the service mark which is the subject of the licensing agreement, or to use the service mark in any manner which is contrary to or not authorized by the licensing agreement.

(Ord. 79-311-129, § 1; Ord. 83-591-400, § 1)

Note— Former § 122.107.