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Articles - Trademark Monitoring Services


From: Gregg R. Zegarelli, Esq.
Subject: Mark Specimens

QUESTION:

What are appropriate specimens for a Federal trademark registration?

ANSWER:

Trademarks (for services, see below).

The specimen must show the mark as used on or in connection with the goods in commerce.  A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods.  A photocopy or other reproduction of a specimen of the mark as actually used on or in connection with the goods is acceptable.  37 C.F.R. §2.56.

The PTO may accept another document related to the goods or the sale of the goods when it is not possible to place the mark on the goods, packaging, or displays associated with the goods.  15 U.S.C. §1127 (definition of "use in commerce").  This provision is not intended as a general alternative to submitting labels, tags, containers or displays associated with the goods; it applies only to situations when the nature of the goods makes use on these items impracticable.  A mere assertion of impracticability may not suffice to establish that such use is impracticable; rather, the record must indicate that the goods are in fact of such a nature.  For example, it may be impracticable to place the mark on the goods or packaging for the goods if the goods are natural gas, grain that is sold in bulk, or chemicals that are transported only in tanker cars. 

In most cases, where the trademark is applied to the goods or the containers for the goods by means of labels, a label is an acceptable specimen. 

Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown.  They are not acceptable if the mark as shown is merely used as a trade name and not as a trademark.  An example of this is the use of the term solely as a return address.  See TMEP §1202.01 regarding trade name refusals. 

In connection with labels whose appearance suggests that they are only for temporary use, the examining attorney may consider it necessary to make further inquiry under 37 C.F.R. §2.61(b) in order to properly examine the application.  A response to the inquiry may include additional specimens if labels of a more permanent nature have by that time been adopted.

Stamping a trademark on the goods, on the container, or on tags or labels attached to the goods or containers, is a proper method of trademark affixation.  The trademark may be imprinted in the body of the goods, as with metal stamping; it may be applied by a rubber stamp; or it may be inked on by using a stencil or template.

When a trademark is used in this manner, facsimiles comprising sheets of paper or other materials on which impressions of the trademark are stamped or stencilled are normally acceptable as specimens (see TMEP §904.08 regarding facsimile specimens). 

When the specimen consists of a stamp on paper, the applicant must explain the nature of the specimen and how it is used.

The terminology "applied to the containers for the goods" means applied to any type of commercial packaging that is normal for the particular goods as they move in trade.  Thus, a showing of the trademark on the normal commercial package for the particular goods is an acceptable specimen.  For example, gasoline pumps are normal containers or "packaging" for gasoline.

A specimen showing use of the trademark on a vehicle in which the goods are marketed to the relevant purchasers may constitute use of the mark on a container for the goods, if this is the normal mode of use of a mark for the particular goods. 

Service Marks (for goods, see above).

A service mark specimen must show the mark as actually used in the sale or advertising of the services recited in the application.  37 C.F.R. §2.56.  Acceptable specimens may include newspaper and magazine advertisements, brochures, billboards, handbills, direct-mail leaflets, menus (for restaurants), and the like.  However, printer's proofs for advertisements, publicity releases to news media, or printed articles resulting from such releases, are not accepted because they do not show use of the mark by the applicant in the sale or advertising of the services.  Business documents such as letterhead and invoices may be acceptable service mark specimens if they show the mark and refer to the relevant services.  TMEP §1301.04(b), 37 C.F.R. §2.59 and TMEP §904.09 regarding substitute specimens. 

To show service mark usage, the specimens must show use of the mark in a manner that would be perceived by potential purchasers as identifying the applicant's services and indicating their source.  TMEP §1301.02.

Where the mark is used in advertising the services, the specimen must show an association between the mark and the services for which registration is sought.  A specimen that shows only the mark, with no reference to the services, does not show service mark usage. 

A specimen that shows the mark as used in the course of performing the services is generally acceptable.  Where the record shows that the mark is used in performing (as opposed to advertising) the services, a reference to the services on the specimen itself may not be necessary. 

In determining whether a specimen is acceptable evidence of service mark use, the examining attorney may consider applicant's explanations as to how the specimen is used, along with any other available evidence in the record that shows how the mark is actually used. 

Letterhead stationery, business cards or invoices bearing the mark may be accepted if they create an association between the mark and the services.  To create an association between the mark and the services, the specimen does not have to spell out the specific nature or type of services.  A general reference to the industry may be acceptable. 

Letterhead or business cards that bear only the mark and a company name and address are not adequate specimens (unless the mark itself has a descriptive portion that refers to the service), because they do not show that the mark is used in the sale or advertising of the particular services recited in the application. 

If the letterhead itself does not include a reference to the services, a copy of an actual letter on letterhead stationery bearing the mark is an acceptable specimen of use if the content of the letter indicates the field or service area in which the mark is used.

For live entertainment services, acceptable specimens include a photograph of the group or individual in performance with the name displayed, e.g., the name printed on the drum of a band.  For any entertainment service, advertisements or radio or television listings showing the mark may be submitted, but the specimens must show that the mark is used to identify and distinguish the services recited in the application, not just the performer.  A designation that identifies only the performer is not registrable as a service mark.  See TMEP §1301.02(b) regarding the registrability of names of characters or personal names as service marks. 

We commonly assist our clients with their mark registration and maintenance strategy.  See also MarkAssure Service. For more information, contact us at info@zegarelli.com



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