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.
