Posted by Susan Dierenfeldt-Troy, Esq.
Troy & Schwartz, LLC
Where Legal Meets Entrepreneurship™
Have a question on specimens for your filed trademark application after reading this blog? We can help ensure the specimens you file will meet the USPTO’s requirements so that your registration will actually issue if the other requirements are met. Our trademark law legal services include: prosecuting trademark applications; representing clients before the Trademark Trial and Appeal Board; and representing clients in trademark infringement lawsuits.
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So your proposed trademark has met the USPTO’s two threshold requirements for registration: 1) there is no likelihood of confusion with existing registered marks; and 2) the mark is not merely descriptive or generic. Nevertheless, the examining attorney has refused registration because the applicant’s provided specimens, required for demonstrating usage of the mark in commerce, do not meet the USPTO’s requirements. This commentator has previously blogged on this topic and is doing so again because there seems to be a lot of confusion over the importance of specimens to the trademark registration process.
Indeed, as a trademark attorney, I have found that specimens are often the most misunderstood requirement for obtaining a registered trademark. That’s why our firm’s trademark legal services involve advising clients about specimen requirements from the get go. At times, we have advised clients to modify their specimens before we submit them to the USPTO in a 1A application. For intent-to-use applications where specimens are not filed with the application but will be required if the mark receives a Notice of Allowance (a preliminary approval of a pending specimen) we work with clients to ensure that they will have suitable specimens commensurate with USPTO requirements for “goods” marks and “services” marks when the Statement of Use is filed. This may include reviewing the Client’s website and recommending layout changes so “specimen” screen shots will meet the USPTO’s specimen requirements. Additionally, we ensure that all submitted specimens clearly identify the applicant as the provider of the goods/services, another essential specimen requirement.
The specimen requirement is no joke. Between Sept. 17 and Sept. 23, 2020, the Trademark Trial and Appeal Board (“Board”) affirmed the decisions by three USPTO examining attorneys who had all refused registration on unacceptable specimen grounds for three different trademarks. All three applicants ended up spending a lot on legal fees only to be denied registration of their marks upon appeal. The following summarizes the three decisions and the commentator’s practice tips.
The case: In re Iguana Yachts. Here the mark was a “goods” mark with following description: “Boats; amphibious vehicles; professional boats, and professional amphibious vehicles in the fields of security, military rescue, and transport of goods and people.” The submitted specimens comprised a banner, a business card, and a website extract with a “custom build quote form.” The Board concluded that there was no evidence that the banner or business card were displayed or distributed at tradeshow, i.e. the specimens were not actually used in interstate commerce as point-of-sale displays. Likewise, there was no evidence as to how the quote form was used to actually place orders on the website for the specified goods. In essence, the provided specimen were mere advertisements. Advertisements may be suitable for service marks but are never suitable for goods marks.
Practice Tip. Ensure that a specimen submitted for a good(s) is not mere advertising. If the specimen represents a point-of-sale display, a customer must have either the ability to buy the good right there or to be able to place an order for the good associated with the mark. That is, the specimen must show how the mark is being used in interstate commerce by the applicant. The mark must also be displayed prominently to ensure that a potential customer identifies the mark with the good. Here, perhaps the website could have been easily amended to provide for a website-related point of sale display before the specimen was ever submitted to the USPTO. All specimens must also specify the applicant as the provider of the goods/services. This requirement is in keeping the trademark law’s focus on the consumer – the consumer has the right to know who is providing the good/service under the mark.
The case: In re Charlie’s EnterprisesEnergy, LLC. Here the slogan mark was for food goods: “Peas, fresh; Vegetables, fresh.” The specimen consisted of “[a] picture of the proposed slogan in use on a semi-trailer wrap.” Additionally, the mark presented in the application did not match the display on the truck. The applicant argued that the wrap was a form of packaging. Indeed, packaging can serve as a goods specimen as long as it shows the mark AND the source of the goods, generally the manufacturer or distributor. Here the Board held that a trailer wrap is not a common packaging for vegetables even though a trailer wrap may be a common way of displaying the mark associated with bulk goods (such as lumber).
Practice Tip. Ensure that the submitted specimen is the type commonly used for the particular good. Additionally, ensure that the specimen’s mark and the mark shown in the application are equivalent. All specimens must also show the source of the goods as the following decision again demonstrates. Perhaps this registration could have been saved if the trailer wrap had at least showed the applied-for mark in its entirety. However, if the goods being transported were sealed in packages for sale at, e.g., a grocery store, a photo showing the packaging with the required info would likely have been accepted.
The case: In re Systemax, Inc. This case involved the situation where the specimens submitted for a service mark application failed to show an association between the mark and the application’s recited services. The specified services were for “holding company service, namely, providing business management, business administration, and human resource management services to subsidiaries and affiliates.” The applicant submitted copies of annual reports and website screen shots which failed to show an association between the mark and the recited holding company services. As such, the Board agreed with the examining attorney and the mark was not registered. This commentator notes that any website screen shot being submitted as a service mark specimen should clearly show the mark on each and every page where a description of the service is presented. Additionally, the applicant, as the service provider, should be readily discernable. Annual reports, invoices, business plans, and the like are not specimens for trademark registration services.
Practice Tip. This case is a perfect example of how any thorough trademark attorney will first carefully review the applicant’s website before submitting any screenshots as specimens. If deficiencies are found, the attorney should advise the client to amend the layout of the website and/or the content before screen shots are submitted as specimens.
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