The Importance of Proper Trademark Use
Trademark specimens are a vital part of a trademark application that are submitted to the United States Patent and Trademark Office (USPTO) to prove that the applicant is actually using the mark in commerce. In recent years, there has been much litigation in the Trademark Trial and Appeal Board (TTAB) and Federal Courts relating to specimens of use. Thus it is more important than ever for trademark owners to work with an attorney to ensure that trademark use is appropriate, and select specimens that meet all the necessary requirements.
In order to be effective the specimen must show:
- The mark in substantially the same form as it appears in the application;
- The goods/services (or a textual description of the goods/services); and
- Some indication that the goods or services are currently available for purchase.
Specimens for applications for goods must be placed on the goods, tags, labels, containers or displays associated with the product. In applications for marks used in connection with services, the specimen of use in commerce can be used in connection with sale or advertising of the services. Business cards, website screenshots, brochures, and similar uses are generally accepted as specimens for service marks.
Specimens must clearly show an association between the mark actually presented in the application and the goods or services claimed in the application. Any major deviation in the way the mark is presented in a specimen from its presentation in the application may prevent registration of the mark. Additionally, in recent years, there has been an increase in the number of rejections of trademark specimens for services based on a perceived ambiguity as to whether the applicant is actually offering the applied for services, as well as concerns on fake specimens.
The PTO can, and often does, reject specimens of use if it finds that the specimen raises reasonable doubt as to whether the applicant is providing the services in connection with the mark. For example, in In re Pitney Bowes, Inc., 125 U.S.P.Q.2d 1417 (TTAB 2018), the applicant submitted a specimen showing a self-serve kiosk in connection with an application for among other things, shipping services. The PTO Examiner denied the application stating that the specimen raised reasonable doubt, despite the applicant’s arguments and statements explaining how it did provide the services. On appeal, the TTAB held that even when a specimen raises reasonable doubt as to whether the applicant is providing the services, an explanation of the specimen and how the applicant provides services referenced on a specimen can overcome an ambiguity. If there is any ambiguity in the specimen, the applicant and trademark counsel should prepare to make such explanations and arguments in advance.
In addition to the reasonable doubt issue, care must be exercised when there is increased scrutiny over the validity of specimens. The USPTO recently began to experience “a plague of fake, doctored and digitally altered specimens” filed with use-based applications under Section 1(a). Many of these originate from China or other foreign countries, but the increased scrutiny applies to all applications. In order to avoid this issue, it is important that any applications based on trademarks in use ensure the mark applied for is the same as it is used in any potential specimen materials. For an intent to use application, it is vital that the form and format of the mark is not changed after the application, such that the eventual specimen matches the application. Further, an attorney should review all specimens carefully to ensure that they match the actual use in commerce and that there have been no accidental or purposeful alterations to the specimen.
Based on both of these issues, it is vital that the specimen of use be reviewed carefully by an attorney before being submitted to ensure their accuracy, authenticity, and adequacy. Even further, an attorney should review proposed uses of the mark to ensure the strongest possible specimens when an application is eventually filed. Working closely with an attorney at all stages of trademark development, use and filing creates the best situation for success in the PTO.
This article is a publication of MWH Law Group LLP and is intended to provide general information regarding legal issues and developments to our clients and other friends. It should not be construed as legal advice or a legal opinion on any specific facts or situations. For further information on your own situation, we encourage you to contact the author of the article or any other member of the firm.
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CONTACT ATTORNEY JASON S. MARIN