examination guide 3-14 service-mark specimens august 2014 service-mark specimens 1 i. background 1 ii. elements of an accepta
Examination Guide 3-14
Service-Mark Specimens
August 2014
Service-Mark Specimens 1
I. Background 1
II. Elements of an Acceptable Service-Mark Specimen 3
III. GROUNDS FOR REFUSAL 4
IV. CONSIDERATIONS AND COMMON ISSUES WHEN EXAMINING A SPECIMEN FOR
TECHNOLOGY-RELATED SERVICES 5
Appendix – Examples of service-mark specimens 9
This examination guide reviews the requirements for service-mark
specimens; discusses issues that frequently arise and explains the
relevant potential refusals; addresses the common types of specimens
submitted in connection with modern technology-related services; and
provides examples. While the guide focuses on service marks for
computer technology services in terms of discussion and examples, the
stated specimen examination principles generally apply to all
service-mark specimens.
I.Background
============
Purpose of Service Marks and Requirement for a Specimen
-------------------------------------------------------
A service mark identifies and distinguishes the services of one party
from those of another and indicates their source.1 To obtain
registration of a service mark under Section 1 of the Trademark Act,
an applicant must submit a specimen showing the mark as used in
commerce.2 Under Section 45, a mark is deemed to be in “use in
commerce” on services “when it is used or displayed in the sale or
advertising of services.”3
Types of Service-Mark Specimens
-------------------------------
“[B]ecause by its very nature a service mark can be used in a wide
variety of ways, the types of specimens which may be submitted as
evidence of use are varied.”4 Whatever type of specimen is submitted,
it must show proper use in commerce, which may be established by (1)
showing the mark used or displayed as a service mark in the sale of
the services,5 which includes use in the course of rendering or
performing the services;6 or (2) showing the mark used or displayed in
advertising the services,7 which encompasses marketing and promotional
materials.8 For purposes of clarity and simplicity, this examination
guide uses the term “rendering” when discussing specimens that show
use of the mark in the sale, performance, or rendering of the
services.
The type of specimen submitted will often be apparent without the need
for additional information regarding how the mark is used on the
specimen. A specimen description submitted by the applicant typically
helps clarify the manner in which the mark is used in commerce, and
the more explanation the applicant provides initially, the more
helpful it is to the examining attorney’s analysis. Thus, applicants
are encouraged to provide a specimen description and explain how the
applicant renders or provides the services and, if relevant, how marks
are commonly used in the particular industry for such services. For
instance, a description stating that a specimen comprises a title
screen bearing the mark and showing the mark used in rendering the
identified services is helpful when examining the nature and
acceptability of the specimen.
If it is not readily apparent that the specimen meets the criteria for
an advertisement or rendering type of specimen, and any specimen
description does not clarify the issue, the specimen must be refused
for failing to show the mark in use in commerce.9 See Part III
regarding the grounds for refusal. If clarification regarding the
nature of the specimen or the manner in which the mark is used may
easily overcome the refusal (e.g., the applicant explains that the
specimen is a title screen displaying the mark at the start of the
provision of the identified services), an advisory to that effect may
be included with the refusal.10
Other Specimen Considerations and Issues
----------------------------------------
Regardless of whether the submitted specimen shows the mark used in
advertising or rendering the services, the examining attorney should
consider the following when determining whether a service-mark
specimen is acceptable.
Whether the Specimen Shows the Mark as Actually Used by the Applicant
in Commerce in the Sale or Advertising of the Services: The specimen
must show the mark as actually used by the applicant in selling or
advertising the services.11 Therefore, materials such as news articles
and mock-ups of advertisements are not acceptable because they do not
demonstrate the required use of the mark by the applicant.12 In some
instances, a specimen or the specimen description may indicate that
the specimen is not yet in use in commerce by inclusion of wording
such as “internal only,” “printer’s proof,” “website coming soon,” or
“under construction.”
Whether the Identified Services Are Registrable Services: A
service-mark specimen must show the mark used or displayed in
connection with a registrable service offered for the benefit of
others. For information regarding activities that constitute
registrable services, see TMEP §§1301.01–1301.01(b)(v).
Whether the Specimen Shows Use in Connection with All Classes in a
Multiple-class Application: The same specimen may be acceptable for
multiple classes if the specimen shows direct association between the
mark and at least one of the identified services in each class. See
Part II.B below. If the applicant intends for a submitted specimen to
support multiple classes, the applicant should include a statement to
that effect and indicate the classes supported by the specimen,13 but
the applicant need not submit multiple copies of the same specimen.14
Whether the Applied-for Mark Is Used in Connection With the Identified
Services: The specimen must demonstrate the applied-for mark serving
as a source indicator for the identified services. Therefore,
registration must be refused if the specimen shows the mark is used
only to promote goods rather than the identified services, or the mark
is used as a service mark but not for the identified services (i.e.,
the applicant misidentified the services).15 See Part III.A regarding
failure to show use in commerce and Part IV.A regarding misidentified
services.
Whether the Applied-for Mark Functions as a Service Mark: The
applied-for mark must actually function as a source-indicating service
mark. Thus, registration must be refused if, for example, the specimen
shows the mark serves solely as a trade name, only as the name of a
computer software program or application, exclusively as the name of a
method, process, or system, or merely as informational or ornamental
matter.16 That the software or process may actually be used in
providing the identified services neither transforms that software or
process into the identified services, nor associates the name of that
software or process as the name of the identified services.17 However,
the specimen may be acceptable if it also shows that the mark serves
as a service mark for the identified services.18 See Part III.B
regarding failure to function as a service mark. The use of the “SM”
symbol with the mark does not, by itself, transform a designation into
a service mark if other indicia suggest that it does not function as a
service mark.19
II.Elements of an Acceptable Service-Mark Specimen
==================================================
To be acceptable, a service-mark specimen must show the mark sought to
be registered used in a manner that demonstrates direct association
between the mark and the services. Essentially, the mark must be shown
“in a manner that would be perceived by potential purchasers as
identifying the applicant's services and indicating their source.”20
The acceptability of a specimen is determined based on the facts and
evidence of record, and viewed in the context of the relevant
commercial environment.21 Thus, the information provided by the
specimen itself, any explanations offered by the applicant clarifying
the nature, content, or context of use of the specimen, and any other
information in the record should be considered in the analysis.22
When the identified services involve newer technology, the examining
attorney must follow the appropriate examination policies and
procedures, but also should employ a practical approach in analyzing
the submitted specimen.23 This may entail reviewing all the
information of record to understand both how the mark is used and how
it will be perceived by consumers.24 Additionally, if the examining
attorney elects to conduct research regarding the mark, the services,
or practices in the particular industry, it may be helpful to consider
any information uncovered regarding how the applicant and others in
the industry typically advertise and render the identified services in
the relevant marketplace, as well as the manner in which service marks
are normally used in connection with those services. See Section IV
below for a discussion of issues surrounding technology-related
services.
Show the Mark
-------------
The mark on the drawing must be a substantially exact representation
of the mark shown on the specimen.25 Furthermore, the designation must
appear sufficiently prominent on the specimen (e.g., placement, size,
or stylization) so that it will be perceived by consumers as a mark.26
For instance, if shown in the same font, size, and color as the
surrounding text on the specimen, the designation may not be perceived
as a source indicator.27
Associate the Mark with the Identified Services
-----------------------------------------------
The specimen must show the mark used in a manner that creates in the
minds of potential consumers direct association between the mark and
the services.28 Direct association is the minimum the specimen must
show,29 and it may be established textually, contextually, or
logically. What is necessary to establish direct association differs
depending on the type of specimen submitted; i.e., whether it is an
advertising specimen or a rendering specimen.
Mark Used in Advertising: For specimens showing the mark used in
advertising the identified services, the specimen must explicitly
reference the services to establish the requisite direct association.30
While the services need not be stated word for word, a “sufficient
reference”31 to the services themselves or a general reference to the
trade, industry, or field of use is required (e.g., use of the word
“design” is a sufficient reference to “commercial art design”
services).32 However, if the alleged reference to the services is so
vague that the services cannot be discerned, the specimen will not be
acceptable.33 See Example 20 (I0BIT).
Mark Used in Rendering: For specimens showing the mark used in
rendering the identified services, the services need not be explicitly
referenced to establish the requisite direct association.34 Rather,
direct association may be indicated by the context or environment in
which the services are rendered, or may be inferred based on the
consumer’s general knowledge of how certain services are provided or
from the consumer’s prior experience in receiving the services.35 In
other words, the context in which the services are provided and
consumer knowledge and experience create an inference of the services
without an explicit textual reference to the services. See Example 17
(CASHFLOW UNITS).
The applicant may respond to a specimen refusal for failing to show
direct association by explaining the nature of the mark’s use or the
manner in which the services are advertised or rendered.36 With
respect to a particular industry’s typical use of marks in relation to
specific services, it may also be helpful for the applicant to provide
an explanation regarding industry practice concerning the use of the
mark during the rendering of such services and how the applicant’s use
comports with such practice. See Example 19 (design of speech
bubbles).
The mere fact that the mark is displayed and the services are
explicitly referenced or can be inferred from the context of the
specimen does not automatically result in direct association between
them.37 The specimen must associate the mark with the services such
that the mark serves as a source identifier for those particular
services.38 See Example 17 (CASHFLOW UNITS) and Example 18 (RIDE 411).
Thus, a specimen is unacceptable if it fails to convey a “proper
nexus” between the mark and the services, or if the services are “too
attenuated from the proposed mark,”39 either in terms of proximity or
logical connection. The mere fact that wording from the identification
of services appears somewhere on the specimen may not necessarily
suffice for the mark-services association or nexus, if there is
nothing else to connect that wording to the mark, such as proximity or
additional text that establishes the connection.
When examining for the mark-services association, the examining
attorney should consider the specimen’s content, layout, and overall
look and feel, as well as any description of the specimen and industry
practice relating to service-mark usage in advertising and rendering
the services.
III.GROUNDS FOR REFUSAL
=======================
Failure to Show the Mark Used in Commerce
-----------------------------------------
Trademark Act Sections 1 and 45 are the statutory bases for refusing a
specimen that does not meet the requirements of an acceptable
service-mark specimen; such specimen is not acceptable because it does
not show the mark in “use in commerce.” For instance, if the mark does
not appear on the specimen or the specimen shows use of the mark in
connection with goods rather than the identified services, the
specimen must be refused for failure to show service-mark use in
commerce in connection with the identified services.
The applicant’s response options include submitting an acceptable
substitute specimen or, if appropriate, amending the application to a
Section 1(b) filing basis.40 In some cases, the applicant may respond
by providing clarification of the nature of the original specimen
submitted, or an explanation of the content of the original specimen,
to justify its acceptability.
The examining attorney may consider any of the following facts and
evidence properly made of record:
*
declarations from persons with firsthand knowledge of the facts,
with a sufficiently detailed explanation of how the mark is used
in advertising or rendering the services or how the services are
advertised or rendered;
*
clarification of the specimen of record, such as an explanation of
the nature, content, or context of use of the specimen (this
explanation need not be verified with a declaration);
*
evidence, such as declarations or industry-related periodicals,
regarding industry practice with respect to how marks and services
are promoted in advertising or how the services are rendered;
*
additional background materials, such as printouts showing
information on subsequent webpages from the applicant’s website or
subsequent screenshots of an electronic device on which the
services may be accessed, rendered, and experienced (this matter
generally need not be verified with a declaration); and/or
*
responses to any Trademark Rule 2.61(b) request for information.
If the specimen of record, the specimen description, the applicant’s
response and explanations, and any additional proffered evidence are
unpersuasive, a final refusal must issue, if the application is
otherwise in condition for final.41
Failure to Show the Mark Functioning as a Service Mark
------------------------------------------------------
A specimen may show the mark used as something other than a service
mark for the identified services. For instance, it may show the mark
used solely as a trade name, only as the name of a computer software
program or application, exclusively as the name of a method, process,
or system, or merely as informational or ornamental matter.42 See
Example 21 (LEADING EDGE TONERS). In such cases, the mark does not
function as a service mark to identify and distinguish the applicant’s
services and indicate their source. Thus, a failure-to-function
refusal should issue under Trademark Act Sections 1, 2, 3, and 45.43
IV.CONSIDERATIONS AND COMMON ISSUES WHEN EXAMINING A SPECIMEN FOR
TECHNOLOGY-RELATED SERVICES
=================================================================
Understanding the Identified Services
-------------------------------------
Proper specimen analysis requires consideration of the nature of the
identified services. Modern computer and technology-related services
present special challenges because these services, and the terminology
used to describe them, are continually evolving. In addition, any
online activity entails the use of computer software, making it
difficult to differentiate the various services provided online from
the underlying technology used to provide them. As the Board has
noted, “[a]lthough it may well be software that is generating the
[services], in today's commercial context if a customer goes to a
company's website and accesses the company's software to conduct some
type of business, the company may be rendering a service, even though
the service utilizes software.”44
It may be unclear, based on the submitted specimen, whether the
applicant is providing non-software services in a given field or
subject matter (e.g., “financial consulting in the field of retirement
planning” in Class 36), or offering computer software or application
services involving that same field or subject matter (e.g., “providing
temporary use of non-downloadable software for retirement planning” in
Class 42), or both. Sometimes, an applicant that is actually providing
non-downloadable software services (e.g., “providing temporary use of
non-downloadable software for medical billing” in Class 42)
misidentifies the services as the underlying function of the software
(e.g., “medical billing” in Class 35). Similarly, the applicant may be
using social networking websites to advertise non-social networking
services (e.g., operating a pet store) and communicate with customers,
leading the applicant to misidentify the services as “online social
networking services.”
Thus, a primary consideration in these instances is whether the
specimen indicates that the applicant is actually performing the
relevant service activities for others, or, for instance, merely
providing software that allows users of the software to perform those
activities themselves, or only offering an online game that is
accessed via a social networking website. See Example 5
(ATHENACOORDINATOR), Example 7 (CLINICANYWHERE), and Example 14
(OUTERNAUTS).
Furthermore, some traditional services, and the associated
terminology, may require fresh understanding and broader
interpretation in the modern commercial environment. More and more
traditional services are now offered online and, increasingly,
multiple services are seamlessly integrated, creating difficulty in
distinguishing the source of the services. For instance, television
programs that were once provided only by broadcast television and
cable outlets are now also accessible via streaming services like
Netflix®, Hulu®, or YouTube®. Thus, typical service identification
terms like “broadcasting,” “distribution,” and “transmission” have
taken on new meaning in the modern marketplace. Thinking of
traditional and other services more broadly and being cognizant of the
current marketplace realities will also help the examining attorney
determine whether the specimen properly shows use of the mark in
association with the identified services.
Resources for Determining the Nature of the Services
----------------------------------------------------
When the nature of the services is not readily apparent from the
information of record, such as the identification and specimen, the
examining attorney may consult several resources for research and
guidance, including: the notices and notes in the U.S. Acceptable
Identification of Goods and Services Manual (ID Manual); the
applicant’s and third-party websites; telephone or e-mail
communication with the applicant or applicant’s attorney; technology
dictionaries, encyclopedias, and trade and industry publications;45
and the Office of Trademark Classification Policy & Practice (i.e.,
ID/Class). In addition, the Trademark Law Library is available to
assist examining attorneys with research. Finally, the examining
attorney may require the applicant to provide further information
about the services, pursuant to Trademark Rule 2.61(b).46
Common Forms of Specimens for Modern Technology-related Services
----------------------------------------------------------------
As noted above, an applicant may submit a specimen that shows the mark
as used in rendering the services. These specimens are often submitted
in connection with modern technology-related services and are
discussed below.
Again, for specimens showing use of the mark in rendering the
services, an explicit, textual reference to the services or their
trade, industry, or field of use is not necessary, but an indication
of the services sufficient to establish direct association between the
mark and the services is required. The examining attorney must refuse
the specimen if neither the specimen itself nor the description of the
specimen provides sufficient information to decipher the nature of the
services, determine the manner of use, and assess whether the
necessary mark-services association exists. See Part III.A above.
Sign-in Screens
Applicants often submit screenshots of sign-in screens as specimens
for online services, such as non-downloadable software services and
application-service-provider services. Sign-in screens show that the
services are available and the context indicates that they are
accessed by inputting credentials, which is a generally known and
accepted means of accessing many online services.47
Some sign-in screens may include a reference to the services and
effectively function as an advertisement. See Example 6 (MYFITAGE).
Other sign-in screens may contain no reference to the services, but
may nonetheless be acceptable if the overall content of the specimen
sufficiently indicates the services. Or, the specimen description may
explain the context of the services by stating the specimen is a
sign-in screen for accessing the services and that applicant is
offering the type of services being applied for. Such an explanation
may provide a sufficient basis for accepting the sign-in screen
specimen, as long as there is no contradictory information in the
record indicating that the mark is not associated with the identified
services. See Example 4 (STAFFTAP).
Title or Launch Screens
A title or launch screen is an on-screen graphic that is typically
displayed at the beginning of entertainment content, such as video
games or ongoing television programs, often with other information
about the content featured. For services such as Class 41
entertainment services involving the provision, production, or
distribution of entertainment content, screenshots of title or launch
screens from the content may create the requisite direct association
between the mark and the services. Thus, title or launch screens may
be acceptable specimens as long as the nature of the specimen is clear
either from the overall look and feel of the specimen or from the
applicant’s description of the specimen.
While showing the title or launch screen being displayed on any
particular electronic device (e.g., television, computer, or
smartphone) is not required, a specimen showing an electronic device
bearing the title or launch screen may be acceptable without further
explanation because it places the mark in the context of how the
services are rendered. See Example 14 (OUTERNAUTS). A title or
launch-screen specimen showing only the mark but not the electronic
device, with no specimen description or an insufficient description,
may require a specimen description identifying the specimen as a title
or launch screen and placing the mark in the context of the services.
See Example 13 (DELICIOSO).
While title or launch-screen specimens may be acceptable to show
service-mark use, the mark must be refused if the specimen shows that
the applied-for mark is the title of a single creative work (e.g., the
title or name of one episode of a television or radio program, one
movie, or one show presented as a single event).48
Webpages
Webpages from an applicant’s or a third-party’s website are routinely
submitted as advertising and are acceptable if they show the mark used
as a service mark, explicitly/textually reference the identified
services, and associate the mark with those services.
Webpages lacking a reference to the services may be acceptable if they
show use of the mark in rendering the services. See Example 14
(OUTERNAUTS).
Webpages from social networking websites should be scrutinized to
ensure that the mark is properly associated with the identified
services. Some applicants may mistakenly mischaracterize their
services as “social networking” because they assume that advertising
or promoting their non-social networking services via a social
networking website means they are providing social networking
services. For instance, an applicant may mistakenly file an
application for “online social networking services” and provide a
Facebook® webpage as a specimen when, in fact, they operate a pet
store and are only using the Facebook® website to advertise the pet
store and communicate information to and messages with actual and
potential customers. Such a specimen is not acceptable for the social
networking services since it does not demonstrate that the applicant
is providing these services.
Software Applications (“Apps”)
Software applications (“apps”) for smartphones and computer tablets
are now commonly used to provide online services. Apps are simply the
interface that enables the providers of the services to reach the
users and render the services, and the users to access those services.
Common specimens for such apps are usually screenshots of electronic
devices demonstrating the apps delivering the services. Such a
specimen may not always depict proper service-mark use of the mark in
connection with the identified services, but it may be acceptable if
the displayed screenshot clearly and legibly shows the mark associated
with the identified services as the services are rendered or performed
via the app. See Example 15 (KURBKARMA).
Appendix – Examples of service-mark specimens
=============================================
I. ACCEPTABLE SERVICE-MARK SPECIMENS
A. Cloud-Computing Services:
Example 1: Reg. No. 4318006 (Apr. 9, 2013)
Mark: CSC CLOUDLAB
Relevant Infrastructure as a Service (IAAS) services, namely,
providing web-based use
Services: of virtualized computer hardware, networking, and storage
equipment on a utility computing basis, namely, providing virtual
computer systems and virtual computer environments through cloud
computing, in Class 42
Analysis:
*
Specimen is described as “web page screenshot” and appears to be
advertising.
*
Mark is displayed near the top center of the webpage in large,
color font, and in the middle center of the webpage at the
beginning of a statement shown in bold font.
*
Services are referenced in the following statements:
*
“CSC CloudLab offers on-demand, web-based access to virtual
machines and data centers.”
*
“CloudLab Cloud Application Testing Services delivers
on-demand scalable, virtualized infrastructure.”
*
Mark-services association is present because the mark is used
directly in connection with the services in textual statements
describing the services, and is placed immediately above
explicit/textual references to the services.
Mark
Straight Arrow Connector 1 Straight Arrow Connector 9
Services
Straight Arrow Connector 21
Example 2: Reg. No. 4246965 (Nov. 20, 2012)
Mark: PARSE
Services: Platform as a service (PAAS) featuring computer software
platforms offering server-side functionality to provide backend
services, namely, data storage, push notifications and user
management, all for mobile applications, in Class 42
Analysis:
*
Original specimen is described as “website offering purchase and
download of Parse software”; the substitute specimen is described
as “website advertising.”
*
On the substitute specimen, the mark is presented in large font on
the top of the webpage and on the screen of an electronic device.
*
Original specimen was refused because the specimen and its
description indicated the mark is used in association with
software goods rather than PAAS services.
*
Substitute specimen is acceptable due to the following statements
referencing the services and the following indicia of the context
in which the services are rendered:
*
The wording “The mobile app platform for developers” and “Add
a powerful and scalable backend in minutes for your Marketing
App” describes the nature of the services.
*
The “Manage your apps” button indicating that the services are
accessed by clicking on the button.
*
Mark-services association is present because it is customary to
display service marks near the top of the webpages on which the
services are advertised or through which they are accessed,
rendered, and experienced. Here, the mark is in close proximity to
explicit textual references to the services and the “Manage your
apps” button, thus creating the mark-services connection.
Original specimen:
Substitute specimen:
Mark
Services
Straight Arrow Connector 38 Straight Arrow Connector 34
Example 3: Reg. No. 4308488 (Mar. 26, 2013)
Mark: MONTAGABLE
Services: Computer software platform as a service (PAAS) featuring
computer software platforms for application building, in Class 42
Analysis:
*
Specimen is described as “screenshots” from applicant’s website
and appears to be advertising.
*
Mark is prominently shown in large font on the top of the webpage.
*
Services are referenced in the following statements:
*
“Montagable is a better way to build web apps.”
*
“Thanks to our exclusive, structureless database platform,
it’s incredibly quick and painless to get your custom app up
and running . . . .”
*
“Everything’s hosted and managed on our secure services, so
you can always get to it with any internet connection.”
*
Mark-services association is present because the mark is used
directly in connection with the services in textual statements
describing the services, and is placed immediately above explicit
textual references to the services as well as in statements
referencing the services.
Mark
Straight Arrow Connector 45
Services
Straight Arrow Connector 48
Example 4: Reg. No. 4318095 (Apr. 9, 2013)
Mark: STAFFTAP
Services: Software as a service (SAAS) services featuring software for
use in staff management and related scheduling tasks, in Class 42
Analysis:
*
Specimen is described as “screenshot capture of a representative
online portal” and appears to show the mark used in rendering the
services.
*
Mark appears prominently in large font on a launch screen, on the
sign-in screen, and on the top of a screen displaying the software
services in use.
*
Services are indicated by the context in which they are rendered,
as follows:
*
A launch screen with the wording “Version 1.0.27” indicates
the version of the online software services being rendered.
*
The “Employee Login” screen indicates that one must log in to
access the software services and the subsequent screen shows
the schedule for Friday and Saturday.
*
A screen showing a date and time grid for scheduling tasks and
the menu on the left containing options, including “Manage My
Shifts” and “View Task Assignments,” indicates the staff
management functions of the software services.
*
Mark-services association is present because the mark appears on
the launch screen where it is customary in such industry to place
the mark under which the services are offered and such placement
is recognized as the introduction of the online services; and the
mark also appears on the sign-in screen where it is customary to
input credentials to gain access to online services. The context
in which the mark is used, i.e., on the title and sign-in screens,
creates the mark-services connection (since using such screens is
common practice for rendering such services) and implies that the
services are available and rendered once the user initiates access
to the services by logging in. The launch screen alone is
acceptable because it is generally known that such screens are
used to initiate the start up of or access to online services. The
sign-in screen is also acceptable on its own since it is a
generally known means of accessing online services. The mark is
also displayed on another screen which shows the mark while the
services are being performed and, thus, the proximity of the mark
to the services conveys a connection.
Mark
Straight Arrow Connector 52 Straight Arrow Connector 55
Straight Arrow Connector 59
Services
Straight Arrow Connector 62 Straight Arrow Connector 63
Straight Arrow Connector 5
Example 5: Reg. No. 4153526 (June 5, 2012)
Mark: ATHENACOORDINATOR
Services: Physician order support services and medical practice
management services relating to medical tests and procedures, namely,
verifying patient eligibility and benefits, handling scheduling
requests, obtaining insurance pre-certifications, handling patient
pre-registrations, and collecting self-pay balances from patients, in
Class 35; and
Software as a service (SAAS) services featuring software for use in
communications between physicians and other participants in the health
care system with respect to orders for medical tests and procedures,
in Class 42
Analysis:
*
Specimen is described as a “brochure” and appears to be
advertising.
*
Mark appears prominently in large font on the top of the brochure.
*
Class 35 services are referenced in the following statements:
*
“Through software and service, we deploy critical knowledge to
support effective and efficient care coordination.”
*
“A dedicated team of remote specialists with essential
clinical and payer knowledge verifies eligibility and
benefits. They also obtain required insurance
pre-certifications to ensure claims get paid the first time.”
*
“A dedicated team of specialists delivers pre-registration
services to ensure order fulfillment, registering patients in
the hospital system and collecting self-pay balances. Patients
and physicians benefit from an efficient registration
process.”
*
Class 42 services are referenced in the following statements:
*
“Through software and service, we deploy critical knowledge to
support effective and efficient care coordination.”
*
“The web-based platform facilitates easy order entry and
status for physician, enables our pre-certification and
pre-registration services and delivers a “clean” order to the
hospital.”
*
Mark-services association is present because the mark is used
directly in connection with the services in textual statements
describing the services, and is placed immediately above explicit
textual references to the services.
Straight Arrow Connector 54
Mark
Straight Arrow Connector 64
Services
Straight Arrow Connector 66
B. Non-Downloadable Software Services:
Example 6: Reg. No. 4222705 (Oct. 9, 2012)
Mark: MYFITAGE
Services: Providing temporary use of non-downloadable computer
software for retirement planning, in Class 42
Analysis:
*
Specimen is described as “web printout” and appears to show the
mark used in rendering the services.
*
Mark is shown in large font at the top of the webpage and in the
middle of the webpage.
*
Services are referenced in the following statements and indicated
by the context in which they are rendered, as follows:
*
The wording “financial planning simplified” appears above the
mark.
*
The wording “Financial Independence Target” appears below the
mark.
*
“myFiTage is your reality check. It estimates your FiT Age –
the earliest age where your future financial resources are
expected to exceed your future living needs.”
*
“Log in” fields are provided for accessing the
non-downloadable software.
*
Mark-services association is present because the mark appears on
the sign-in screen where it is customary in such industry to input
credentials to gain access to online services. The context in
which the mark is used, i.e., during the sign-in process, creates
the connection with the services since sign-in screens are common
practice and imply that the services are available and rendered
once the user logs in. Additionally, the mark is used directly in
connection with the services in textual statements describing the
services, and is placed above and below statements referencing the
services, further conveying the mark-services connection. The
sign-in screen alone would also be acceptable even if the services
were not textually referenced since it is a generally known means
of accessing online services. The specimen is acceptable both as
an advertisement and as showing the mark in rendering the
services.
Mark
Straight Arrow Connector 69 Straight Arrow Connector 71
Services
Straight Arrow Connector 72 Straight Arrow Connector 23
Example 7: Reg. No. 4453195 (Dec. 24, 2013)
Mark:
Services: Medical Billing Support, in Class 35; and
Providing on-line, non-downloadable, Internet-based software
application for medical billing for physicians and health care
institutions, in Class 42
Analysis:
*
Specimen is described as an advertisement.
*
Mark is prominently displayed in large, color font in the middle
of the advertisement.
*
Class 35 services are referenced in the following statement:
*
“Top-notch Medical Billing Services.”
*
Class 42 services are referenced in the following statements:
*
“Cloud-based Practice Management and EHR Solutions.”
*
“Any device. Any time. Anywhere.......ClinicAnywhere.”
*
Mark-services association is present because the mark is used
directly in connection with the services in textual statements
describing the services, and is placed immediately below explicit
textual references to the services.
Services
Mark
Straight Arrow Connector 96 Straight Arrow Connector 97
C. Application-Service-Provider (ASP) Services:
Example 8: Reg. No. 3001514 (Sept. 27, 2005)
Mark: INSITE TICKETING
Services: Application service provider (ASP), namely, hosting computer
software applications for others in the field of ticketing and related
ticketing services, in Class 42
Analysis:
*
Specimen is described as a “screen shot” and appears to show the
mark used in rendering the services.
*
Mark is prominently displayed on the bottom of the screenshot.
*
Services are indicated by the context in which they are rendered,
as follows:
*
The mark is displayed directly below the area where customers
purchase tickets, thereby indicating that the ASP hosting or
providing the software services is INSITE TICKETING.
*
The wording “Technology by” placed next to the mark, implies
that the software technology services that are operating the
website are provided by the applicant.
*
Mark-services association is present because the mark is displayed
on the screen where the services are rendered and experienced.
While another mark, “Ticket Central,” is shown on the top left of
the webpage, it appears to be associated only with
ticket-purchasing services, not ASP services, and thus does not
detract from associating the applied-for mark with the identified
services.
Mark
Straight Arrow Connector 164
Services
Straight Arrow Connector 166
D. Telecommunication Services:
Example 9: Reg. No. 4307737 (Mar. 26, 2013)
Mark: GOVHUB
Services: Providing on-line forums for transmission of messages among
computer users, in Class 38
Analysis:
*
Original specimen is described as “website screen-shot” and the
substitute specimen is described as “screenshot of the homepage of
the website.”
*
Mark is presented on the substitute specimen at the top right of
the webpage.
*
Original specimen was refused because it failed to reference the
services.
*
Substitute specimen is acceptable because the services are
indicated by the following:
*
“Sign in to GovHub” indicates that a user may log in to use
the services, i.e., read and send messages.
*
“Top Discussions” shows two discussion topics in progress, and
the “5” and “0” shown in the color blue specify that there are
5 messages posted for the first discussion and 0 for the
second discussion, indicating that the services involve
on-line forums for transmission of messages.
*
Mark-services association is present on the substitute specimen
because it is customary to display service marks near the top of
the webpage on which the services are advertised or through which
they are accessed, rendered, and experienced. Here, the mark is in
proximity to indicia implying the services and no other marks
appear to negate the mark-services connection. While the services
are not explicitly textually referenced, when viewing the heading
“Top Discussions,” the two discussion topics below it, and the “5”
and “0” messages posted about the discussion topics – all these
factors together indicate that applicant is offering online forum
services.
Original specimen:
Substitute specimen:
Mark
Straight Arrow Connector 85
Services
Straight Arrow Connector 87
Example 10: Reg. No. 4303786 (Mar. 19, 2013)
Mark: HOMETOWN SOUNDS
Services: Electronic transmission and streaming of digital media
content for others via global and local computer networks; Streaming
of audio material on the Internet; Transmission services via the
Internet, featuring MP3 files and music videos, in Class 38
Analysis:
*
Specimen is described as “website for Hometown Sounds” and appears
to show the mark used in rendering the services.
*
Mark is presented in large font on the top of the webpage.
*
Services are referenced in the following statements and indicated
by the context in which they are rendered, as follows:
*
The wording “DC’s local music internet station” describes the
services.
*
The wording “Listen Now” indicates that the website may be
used to stream audio content.
*
The link “Click Here to listen to Hometown Sounds” indicates
that the services are accessed by clicking on the link.
*
Mark-services association is present because it is customary to
display service marks near the top of the webpage on which the
services are advertised or through which they are accessed,
rendered, and experienced. Here, the mark is physically close to
indicia implying the services and no other marks appear to negate
the mark-services connection. The mark appears above textual
references to the services as well as in textual instructions for
accessing the services, which further conveys the mark-services
connection. The specimen is acceptable both as an advertisement
and as showing the mark in rendering the services.
Mark
Straight Arrow Connector 89
Services
Straight Arrow Connector 91 Straight Arrow Connector 92
Example 11: Reg. No. 4306455 (Mar. 19, 2013)
Mark:
Services: Broadcasting of video and audio programming over the
Internet, in Class 38
Analysis:
*
Specimen is described as “web page” and appears to show the mark
used in rendering the services.
*
Mark is shown in large font on the top of the webpage.
*
Services are indicated by the following:
*
A freeze-frame of a video featuring a play button is displayed,
indicating the services are accessed by clicking the play
button.
*
The wording “Join Now! Get the latest feel-good videos, news and
events” conveys the different content that is available for
broadcast.
*
The wording “Latest Videos” and the images of several videos
appear near the bottom, implying that other videos are available
for broadcast.
*
Mark-services association is present because it is customary to
display service marks near the top of the webpages on which the
services are advertised or through which they are accessed,
rendered, and experienced. Here, the mark is sufficiently near
indicia implying the services and no other marks appear to negate
the mark-services connection. While the nature of the services is
not explicitly textually referenced, the display of the play
button and “Latest Videos” indicate that applicant is offering
broadcasting services.
Mark
Straight Arrow Connector 99
Services
Straight Arrow Connector 101 Straight Arrow Connector 102
E. Entertainment Services:
Example 12: Reg. No. 4298664 (Mar. 5, 2013)
Mark: CINEMAX
Services: Entertainment services in the nature of providing
entertainment programming and content, namely, on-going television
programs, and related clips and graphics and information relating to
television programming and content in the fields of comedy, drama,
action, adventure via television, cable and satellite systems, the
Internet, electronic communications networks, computer networks and
wireless communications networks, in Class 41
Analysis:
*
Specimen is described as “mark as used in commerce on specified
goods and services” and appears to be a webpage advertising some
of the identified services and rendering other identified
services.
*
Mark is displayed prominently at the top of the webpage.
*
Services are referenced in the following wording and statements:
*
The navigation tabs at the top “VIDEOS,” “SCHEDULE,” “ORIGINAL
SERIES,” “MOVIES,” and “AFTER DARK” indicate the entertainment
content available.
*
The play button next to “WATCH PREVIEW” indicates that a clip
of the show “ASYLUM BLACKOUT” may be viewed.
*
The reference to “BANSHEE” states “From the creator of ‘True
Blood’ comes a Cinemax original series about a small town
where nothing is as it seems . . .,” advertising another
on-going television program.
*
Mark-services association is present because it is customary to
display service marks near the top of the webpage on which the
services are advertised or through which they are accessed,
rendered, and experienced. Here, the mark is sufficiently near
textual references to the services, thus indicating the
mark-services connection.
Mark
Straight Arrow Connector 119
Services
Straight Arrow Connector 121 Straight Arrow Connector 122
Straight Arrow Connector 105
Example 13: Reg. No. 4337921 (May 21, 2013)
Mark: DELICIOSO
Services: Entertainment and education services, namely, ongoing
television program concerning cooking and nutrition, in Class 41
Analysis:
*
Specimen is described as a “photo of opening title of applicant's
television program” and appears to show the mark used in rendering
the services.
*
Mark is prominently shown in large font on the title screen of an
electronic device that is displaying the ongoing television
program.
• Mark-services association is present because the mark appears on the
title screen where it is customary in such industry to place the mark
under which the services are promoted. It is common practice for a
title screen bearing the mark to appear at the start of entertainment
content and indicate the launch of the services. While the nature of
the services is not textually referenced, it is sufficient that the
overall content of the specimen implies that applicant is offering
entertainment services.
*
The specimen would be unacceptable without the specimen
description, which clarifies that the specimen is an “opening
title” and places the mark in the context of providing the
services. Since the specimen could possibly be print advertising,
a specimen description is necessary to clarify the nature of the
specimen. The top right corner of the specimen shows some wording
that suggests that the title screen is displayed on an electronic
device. However, since that wording is not legible and the context
of the title screen is not visible, the nature of the specimen is
unclear and, thus, a specimen description is required clarifying
that it is a title screen.
Mark
Straight Arrow Connector 110
Example 14: Reg. No. 4255257 (Dec. 4, 2012)
Mark: OUTERNAUTS
Services: Entertainment services, namely, providing online video
games, in Class 41
Analysis:
*
Specimen is described as a “screenshot of the page on
Facebook.com, an Internet website, from which the services are
provided to users” and appears to show the mark used in rendering
the services.
*
Mark is prominently shown in large font near the top of the
webpage.
*
Services are referenced in the following statements and indicated
by the following:
*
The mark appears near video game information “Get Star Gems,”
“Leaderboard,” and “loading Outernauts.”
*
The mark appears near the word “Games,” generally referencing
the services.
*
Mark-services association is present because it is customary to
display service marks near the top of the webpage on which the
services are advertised or through which they are accessed,
rendered, and experienced. Here, the mark is near indicia implying
the services and other marks appear to cloud the mark-services
connection. While the specimen shows the webpage is from a
third-party website, i.e., Facebook®, this does not diminish the
requisite association due to the proximity of the applied-for mark
to the matter indicating the online services, which appear to be
directly launched from the website. The screenshot also appears to
be of the title or launch screen of the online video game, where
it is common practice in such industry to place the mark under
which the services are promoted and where such placement is
recognized as the introduction of the online services. The
screenshot here implies, and it is generally known, that access to
and performance of the services begins with this screen. The
specimen description combined with the wording “loading
Outernauts” further supports the mark-services connection. The
specimen is also acceptable as an advertisement since the word
“Games” appears on the lower left corner as part of a third-party
mark “Insomniac Games.” It may be inferred that the combination of
the applied-for mark OUTERNAUTS with the reference to “Games” and
to “EA” sufficiently and textually references the online video
game services.
Mark
Services
Straight Arrow Connector 74 Straight Arrow Connector 75
Straight Arrow Connector 76 Straight Arrow Connector 103
F. Miscellaneous Services:
Example 15: Reg. No. 4392992 (Aug. 27, 2013)
Mark: KURBKARMA
Services: On-line matching services for connecting automobile drivers
with other drivers who are, respectively, searching for or departing
from parking spaces accessible via a mobile application, in Class 35
Analysis:
*
Specimen is described as “screenshot of the ITunes store which
features Applicant's mark and describes Applicant's services.”
*
Mark is displayed in bold font in the middle left of the webpage.
*
Services are indicated by the following:
*
The iPhone® screen images clearly and legibly show the wording
“Have a Spot,” “Need a Spot,” and “Available Spots,”
indicating the services being performed by the applicant via
the app.
*
Mark-services association is present because the mark is placed in
sufficiently close proximity to the iPhone® screenshots, which
show the services as they are accessed and rendered via the
device.
Mark
Straight Arrow Connector 124
Services
Straight Arrow Connector 128
Example 16: Reg. No. 3841358 (Aug. 31, 2010)
Mark: VTECH DIRECT
Services: Providing a web site for online business-to-business store
services featuring wireline telephony products and wireless fidelity
streaming music devices; online business-to-business store featuring
wireline telephony products and wireless fidelity streaming music
devices, in Class 35
Analysis:
*
Specimen is described as “pages from website” and appears to show
the mark being used in both the advertising and rendering of the
services.
*
Mark is displayed prominently in bold font on the top left of each
webpage.
*
Services are referenced and indicated by the following:
*
“Sign In” fields are provided for accessing the online
business-to-business store services, indicating that one may
access the services by logging in.
*
“Tune in over 11,000 stations around the globe using wireless
Internet access. Listen to music, sports, talk radio and
more.”
*
Image of an electronic streaming music device described as
“IS9181 – (80-6569-02) Stream internet radio stations Stream
digital music files stored on your PC or Mac Connect to your
MP3 or CD player.”
*
Mark-services association is present because it is customary to
display service marks near the top of the webpage on which the
services are advertised or through which they are accessed,
rendered, and experienced. Here, the mark is near explicit textual
references to the services, thus conveying the mark-services
connection. The webpage showing the sign-in fields is an
acceptable specimen since signing-in is a generally known means of
accessing online services. Thus, the specimen is acceptable both
as an advertisement and as showing the mark in rendering the
services.
Straight Arrow Connector 67
Mark
Straight Arrow Connector 161
Services
Straight Arrow Connector 106
Mark
Services
Straight Arrow Connector 168
Example 17: In re McGowan Publ’g Co., Ser. No. 77582970, 2013 TTAB
LEXIS 364 (June 27, 2013)
**For illustrative purposes only and not intended as precedential
authority.**
Mark: CASHFLOW UNITS
Services: Investment products, namely, wealth management and
performance tracking, and providing financial advisory and financial
portfolio management services, in Class 36
Decision: Specimen is acceptable because it shows mark-services
association
TTAB Noted:
*
Specimens are described as “webpages.”
*
Mark is placed below “the McGowanGroup Asset Management banner.”
*
The Board held the specimen acceptable as showing use of the mark
in rendering the services based on the following findings:
*
“The disclosures at the bottom of one webpage inform the
viewer that applicant is a ‘Federally Registered Investment
Advisory Firm.’”
*
The mark “appears under the McGowanGroup Asset Management
banner, thus informing the viewer that CASHFLOW UNITS are part
of an asset management service.”
*
Directly below the mark are links to two documents: (1) the
“MGAM Wrap Program Assets Discretionary Advisory Agreement”;
and (2) the “MGAM RIA Disclosure”. The Board noted that the
first document is the applicant’s contract and an offer to
enter into an agreement for advisory services, and the second
document is the applicant’s notice of compliance with the
conflict of interest rules.
*
The mark on the webpage is placed “in close proximity to links
for documents used by applicant in rendering those services”
and “the links to these documents create an association
between the mark and the offered service activity.”
Straight Arrow Connector 133
Mark
Straight Arrow Connector 130
Services
Straight Arrow Connector 132
Example 18: Reg. No. 4147512 (May 22, 2012)
Mark: RIDE 411
Relevant Providing an online search engine service for new and used
automobile
Services: listings and automobile related information; Providing
specific information as requested by customers via the Internet;
Provision of Internet search engines; Provision of search engines for
the Internet, in Class 42
Analysis:
*
Specimen is described as “screen shot of our website” and appears
to be a webpage advertising some of the identified services and
rendering other identified services.
*
Mark is displayed in large, color font on the top of the webpage.
*
Services are referenced in the following statements and indicated
by the context in which they are rendered, as follows:
*
“Simply type any keyword(s) into our search engine to find a
group of suppliers for exactly what you are looking for, or
select from a category and drill down from there.”
*
The wording “Your destination for hard to find classic car
parts, services, events & more” and “FIND ... How can I find
hard to locate parts for my classic car?” indicates the nature
of the services provided.
*
Hyperlinks appear under “Locate Parts,” “Locate Services,” and
“Search By Category.”
*
Services are provided primarily for the benefit of others, i.e.,
the users are able to view the search results from a variety of
sources from the Internet in one list.
*
Mark-services association is present because it is customary to
display service marks near the top of the webpage on which the
services are advertised or through which they are accessed,
rendered, and experienced. Here, the mark is near textual
references to the services, thus indicating the mark-services
connection. The mark is also near indicia of the services, i.e.,
searchable links and categories for locating automobile parts and
services, which is also sufficient to show a mark-services
association. Thus, the specimen is acceptable both as an
advertisement and as showing the mark in rendering the services.
Mark
Straight Arrow Connector 135
Services
Straight Arrow Connector 137
Example 19: Reg. No. 4335349 (May 14, 2013)
Mark: (stylized speech bubbles)
Services: Online social networking services, in Class 45
Analysis:
*
Specimen is described as “screenshot of applicant’s software” and
appears to show the mark used in rendering the services.
*
Mark is displayed in the color blue at the bottom of the screen of
an electronic device.
*
Services are indicated by the following:
*
A highlighted “People” tab appears at the top of the screen,
as does a search bar containing the wording “Search for
people.”
*
The wording “People I Follow (41)” indicates that the user
follows 41 people and the screen shows a list of people being
followed, each specifying the number of “people in common.”
*
Applicant explained that the specimen is a screenshot from an
Apple® handheld mobile device showing the mark used in rendering
the services.
*
Mark-services association is present because the mark appears on
the screen of an electronic device via which the online services
are accessed, rendered, and experienced. Additionally, the mark is
displayed on the screen below indicia implying the services as
well as showing the services as they are accessed and rendered via
the device. The context in which the mark is used, i.e., while the
services are being performed and experienced, creates the
association with the services. The presence of a third-party mark
(AT&T®) displayed on the top left of the screenshot does not
detract from the applicant’s mark being associated with the
services. The AT&T® mark denotes the telecommunication company
that provides the connection to the Internet, but it appears that
the applicant’s services enable online social networking.
Mark
Straight Arrow Connector 140
Services
Straight Arrow Connector 142 Straight Arrow Connector 143
Straight Arrow Connector 144
II. UNACCEPTABLE SERVICE-MARK SPECIMENS
Example 20: In re Chengdu AOBI Info. Tech. Co., Ser. No. 77723547,
2011 TTAB LEXIS 188 (May 31, 2011)
**For illustrative purposes only and not intended as precedential
authority.**
Mark: I0BIT
Services: Computer programming; Computer software design; Conversion
of data or documents from physical to electronic media; Data
conversion of computer programs and data, not physical conversion;
Duplication of computer programs; Hosting of web sites; Installation
of computer software; Maintenance of computer software; Research and
development for new products for others; Research and development of
computer software; Updating and maintenance of computer software, in
Class 42
Decision: Specimen is not acceptable because it lacks mark-services
association
TTAB Noted:
*
Specimen is a “screenshot from applicant’s website.”
*
The Board found the following statements were vague and did not
sufficiently reference the services:
*
“Our sincere commitment to all our customers is that we will
continue delivering innovative system utilities that are as
simple to use as they are powerful and reliable. We also
promise that we will keep providing the first-class free
software and online service, for personal or non-commercial
use.”
*
“We pursue the genuine ambition of becoming one of the world's
top utility producers and Windows system service providers on
the Internet.”
*
It is unclear whether the reference to “online service” is to a
separate service or part of the free software goods. The textual
reference to becoming a top utility producer and Windows system
service provider is not sufficient to indicate being a provider of
the identified services.
Mark
Straight Arrow Connector 153
Insufficient
Reference to
Services
Straight Arrow Connector 155 Straight Arrow Connector 156
Example 21: In re Supply Guys Inc., 86 USPQ2d 1488 (Mar. 6. 2008)
Mark: LEADING EDGE TONERS
Goods: Numerous goods including:
toner; toner cartridges, in Class 2;
components for laser toner cartridges; and printer parts, in Class 9;
and
Ink sticks, in Class 16
Decision: Mark does not function as a trademark
TTAB Noted:
*
Specimen is described as a “web page.”
*
Mark is displayed in several places, including at the bottom right
corner next to the copyright notice.
*
The Board noted that “where the mark is used with the copyright
notice . . ., applicant assumed ‘without admitting’ that the use
was solely as a trade name.”
*
While the specimen is not acceptable for the identified goods, had
the mark been used in connection with retail store or
distributorship services, the specimen would likely have been
acceptable due to the placement of the mark on the upper left
corner of the webpage where service marks normally appear.
Trade Name Usage
Straight Arrow Connector 40
Enlargeable specimen images are accessible via the Trademark Image
Capture and Retrieval System (TICRS) available to the USPTO staff or
via the Trademark Status and Document Retrieval (TSDR) portal
available to the public.
While this case involved specimens for goods, it is being included
as an example of trade name usage, an issue that may arise in
examination of specimens for goods or services.
1 15 U.S.C. §1127.
2 15 U.S.C. §1051(a)(1); 37 C.F.R. §2.56(a); Trademark Manual of
Examining Procedure (TMEP) §1301.04 (Apr. 2014).
3 15 U.S.C. §1127.
4 In re Metriplex, Inc., 23 USPQ2d 1315, 1316 (TTAB 1992).
5 See 37 C.F.R. §2.56(b)(2); TMEP §1301.04.
6 See In re Metriplex, Inc., 23 USPQ2d at 1316 (indicating that a
specimen that does not explicitly refer to the services may be
acceptable if it “show[s] use of the mark in the rendering, i.e.,
sale, of the services”); In re Red Robin Enters., 222 USPQ 911, 914
(TTAB 1984) (stating that “rendition” of services is properly viewed
as an element of the “sale” of services); TMEP §1301.04(b); see also
On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1088, 56
USPQ2d 1471, 1476-77 (Fed. Cir. 2000) (indicating that an online menu
item bearing the mark ONLINE TODAY was proper service mark use in
connection with “providing access to online computer services offering
computer-industry news, commentary and product reviews” because, inter
alia, the “menu items are the mechanisms by which users obtained
access to a particular online service”).
7 See 37 C.F.R. §2.56(b)(2); TMEP §1301.04.
8 See TMEP §§1301.04–1301.04(d).
9 See 15 U.S.C. §1127.
10 As always, under Trademark Rule 2.61(b), 37 C.F.R. §2.61(b), an
examining attorney may also require the applicant to submit additional
information about the specimen or the mark’s manner of use.
11 See 37 C.F.R. §2.56(b)(2); TMEP §1301.04.
12 TMEP §1301.04.
13 See TMEP §904.01(b).
14 See id.
15 See TMEP §§1301.02(a), 1301.02(e)–1301.02(f).
16 See In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ
456, 457 (C.C.P.A. 1973) (“The requirement that a mark must be ‘used
in the sale or advertising of services’ to be registered as a service
mark is clear and specific. We think it is not met by evidence which
only shows use of the mark as the name of a process and that the
company is in the business of rendering services generally, even
though the advertising of the services appears in the same brochure in
which the name of the process is used. The minimum requirement is some
direct association between the offer of services and the mark sought
to be registered therefor.”); In re Osmotica Holdings Corp., 95 USPQ2d
1666, 1669 (TTAB 2010) (finding that, although the submitted specimens
referenced the identified consulting services, the applied-for mark,
as used on the specimens, would be perceived by the relevant public as
identifying only applicant’s drug technology and thus the specimens
failed to establish the required association between the mark and the
identified services); In re DSM Pharm., Inc., 87 USPQ2d 1623, 1625-26
(TTAB 2008) (finding the submitted specimen unacceptable evidence of
use of the mark in connection with custom manufacturing services
because it did not show an association between the mark and the
services, but instead the mark was used only to refer to computer
software); TMEP §§1202.01, 1202.03–1202.04, 1301.02(a),
1301.02(e)–1301.02(f). Compare In re LaBellarte, Ser. No. 76526520,
2009 TTAB LEXIS 399, at *7-9 (May 29, 2009) (finding the submitted
specimens were unacceptable since they showed the mark being used only
to identify a proprietary principle used in developing the applicant’s
services and, thus, did not create the required association between
the mark and the services), with In re Casino Data Sys., Ser. No.
74622053, 1999 TTAB LEXIS 117, at *7-8 (Mar. 31, 1999) (finding that
the submitted specimen was acceptable evidence of service-mark use for
computer programming services because it indicated that applicant
provides a comprehensive slot accounting, player marketing, and
analysis system that involves customized computer programming for each
casino customer; noting that “[i]t is not necessary that applicant
spell out in the brochure that it offers computer programming
services”).
17 See In re HSB Solomon Assocs., LLC, 102 USPQ2d 1269, 1274 (TTAB
2012) (finding no direct association between the mark, CEI, and the
identified technical consultation services because the submitted
specimens showed the mark being used only to identify a metric, index,
equivalency factor, standard, or performance measure and never to
identify the identified services; noting that, even if the CEI metric,
index, equivalency factor, standard, or performance measure is used by
applicant in performing the identified services, that “does not
transform that metric into a technical consulting service or associate
the term CEI with the technical consulting service such that it serves
as a source identifier rather than simply the name of a process”); In
re Walker Research, Inc., 228 USPQ 691, 692 (TTAB 1986) (finding the
submitted specimen unacceptable since SEGMENTOR referred only to the
computer software used in performing the services and not to identify
and distinguish the services themselves; noting that “[t]he fact that
applicant does not sell the ‘SegMentor’ software and may not use
‘SegMentor’ in a technical trademark case in connection with the
software does not . . . warrant a finding that ‘SegMentor’ must
therefore function as a service mark”); TMEP §1301.02(f).
18 See TMEP §§1301.02(e)–1301.02(f).
19 See TMEP §1301.02. Likewise, the “TM” symbol, which is occasionally
used in connection with service marks, is not, by itself, an
indication that the designation functions as a service mark.
20 In re DSM Pharm., Inc., 87 USPQ2d at 1624; see In re Ancor
Holdings, LLC, 79 USPQ2d 1218, 1220 (TTAB 2006) (citing In re Walker
Research, Inc., 228 USPQ at 692); TMEP §1301.04(a).
21 See In re Ancor Holdings, LLC, 79 USPQ2d at 1220 (“[W]e must base
our determination of public perception of applicant's mark on the
manner of use of [the mark] in the advertising which has been
submitted as a specimen. Further, we must make that determination
within the current commercial context, and, in doing so, we may
consider any other evidence of record ‘bearing on the question of what
impact applicant's use is likely to have on purchasers and potential
purchasers.’” (quoting In re Safariland Hunting Corp., 24 USPQ2d 1380,
1381 (TTAB 1992)).
22 In re DSM Pharm., Inc., 87 USPQ2d at 1626 (“In determining whether
a specimen is acceptable evidence of service mark use, we 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.”); In re Ancor Holdings, LLC, 79 USPQ2d at 1220.
23 See In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286 (TTAB 2000)
(finding a business card and stationery displaying the mark and the
word “design” were acceptable specimens of use for applicant’s mark in
connection with commercial art design services, noting that “[i]t is
not necessary that the specific field of design, i.e., commercial art,
also appear thereon” and that “the word ‘design’ alone is sufficient
to create in the minds of purchasers an association between the mark
and applicant's commercial art services”); In re Metriplex, Inc., 23
USPQ2d 1315, 1316 (TTAB 1992) (finding the submitted specimens
acceptable to show use of applicant’s mark in connection with data
transmission services because the specimens showed “the mark as it
appears on a computer terminal in the course of applicant's rendering
of the service” and noting that “purchasers and users of the service
would recognize [applicant’s mark], as it appears on the computer
screen specimens, as a mark identifying the data transmission services
which are accessed via the computer terminal”); In re PrintCo., Inc.,
Ser. No. 78155673, 2006 TTAB LEXIS 264, at *8 (July 14, 2006) (“When
appropriate, the Board has been fairly flexible in accepting service
mark specimens.”).
24 In re Ancor Holdings, LLC, 79 USPQ2d at 1221.
25 See TMEP §§807.12–807.12(a)(iii) and 807.12(d)–807.12(e) regarding
agreement of the mark on the drawing and on the specimen.
26 See In re Dell Inc., 71 USPQ2d 1725, 1729 (TTAB 2004) (finding a
mark “sufficiently prominent” even though it was “shown in a smaller
type size than other words appearing on the webpage,” given that it
appeared “in a bullet listing of information about the product,” and
was placed “at the beginning of a line and [was] followed by the ‘TM’
trademark indicator”); TMEP §904.03(i)(B)(1). Compare In re Quantum
Foods, Inc., 94 USPQ2d 1375, 1378 (TTAB 2010) (describing an
applied-for mark as “prominently displayed” on the specimen when the
mark appeared by itself above pictures relating to applicant’s goods
in relatively large font and in a different color than some of the
other text on the page), with In re Osterberg, 83 USPQ2d 1220, 1223
(TTAB 2007) (finding the applied-for mark not prominently displayed
because it was buried in text describing the mark and, while the mark
was shown in bold font, so was other matter), and In re LaBellarte,
Ser. No. 76526520, 2009 TTAB LEXIS 399, at *7 (May 29, 2009)
(concluding that the mark, SOFT ROOM, would not be perceived as a
service mark because, inter alia, it is “in the same font and size as
other wording arranged randomly on the specimen”).
27 See In re Osterberg, 83 USPQ2d at 1223; In re LaBellarte, 2009 TTAB
LEXIS 399, at *7.
28 In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456,
457 (C.C.P.A. 1973) (“The minimum requirement is some direct
association between the offer of services and the mark sought to be
registered therefor.”); see also In re Adver. & Mktg. Dev., Inc., 821
F.2d 614, 620, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987) (“The ‘direct
association’ test does not create an additional or more stringent
requirement for registration; it is implicit in the statutory
definition of ‘a mark used * * * to identify and distinguish the
services of one person * * * from the services of others and to
indicate the source of the services.’”); In re Johnson Controls, Inc.,
33 USPQ2d 1318, 1320 (TTAB 1994) (“While the nature of the services
does not need to be specified in the specimens, there must be
something which creates in the mind of the purchaser an association
between the mark and the service activity.”); TMEP §1301.04(b).
29 In re Universal Oil Prods. Co., 476 F.2d at 655, 177 USPQ at 457.
30 See In re Monograms Am., Inc., 51 USPQ2d 1317, 1318 (TTAB 1999);
TMEP §1301.04(b).
31 In re Monograms Am., Inc., 51 USPQ2d at 1318; see also In re Atlas
Media Corp., Ser. No. 76685286, 2009 TTAB LEXIS 215, at *3 (Mar. 6,
2009).
32 See In re Ralph Mantia Inc., 54 USPQ2d at 1286 (reversing the
specimen refusal since the term “design” appeared on applicant’s
letterhead stationery, envelope, and business cards and stating “[i]t
is not necessary that the specific field of design, i.e., commercial
art, also appear [on the specimen]. Here, the word ‘design’ alone is
sufficient to create in the minds of purchasers an association between
the mark and applicant's commercial art services.”); In re Monograms
Am., Inc., 51 USPQ2d at 1318; see also TMEP §1301.04(c) (“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.”); In re
Zinpro Corp., Ser. No. 85369372, 2013 TTAB LEXIS 146, at *7-8 (Mar.
22, 2013) (“As to the required degree of specificity, the involved
specimen does not have to spell out the specific nature and type of
services. Rather, a general reference to the industry may be
acceptable to create an association between the mark and the
services.”).
33 See In re Monograms Am., Inc., 51 USPQ2d at 1318 (“There must be,
however, a direct association between the mark sought to be registered
and the services specified in the application, and there must be
sufficient reference to the services in the specimens to create this
association” (emphasis added)); In re Prof’l Research Consultants,
Inc., Ser. Nos. 77490850 & 85447154, 2013 TTAB LEXIS 99, at *6-7 (Feb.
25, 2013) (finding the submitted webpage specimen unacceptable because
it “simply does not specify what type of services are offered by
applicant” and noting that “[w]ith such vagueness, it would require a
real leap for consumers to understand that the webpage is associating”
the mark with the identified services); In re Ingram Micro Inc., Ser.
Nos. 78321253 & 78321254, 2011 TTAB LEXIS 371, at *15-17 (Nov. 15,
2011) (finding manuals and website printouts unacceptable as specimens
of use for the identified services because the services were not
referenced in connection with the mark but, instead, were identified
by other terms); In re R & B Receivables Mgmt., Inc., Ser. No.
77855168, 2011 TTAB LEXIS 294, at *6-8 (Sept. 23, 2011) (finding
specimen consisting of a photo of signage on, and in front of, the
building in which services are rendered unacceptable as an
advertising-type specimen since it did not sufficiently reference the
services); In re Chengdu AOBI Info. Tech. Co., Ser. No. 77723547, 2011
TTAB LEXIS 188, at *5-6 (May 31, 2011) (finding that the submitted
webpage specimen’s “vague references” to “online service” and
applicant’s ambition to become “one of the world’s top utility
producers and Windows system service providers” were insufficient to
show use of mark for the identified computer programming, software
design, website hosting, and other computer-related services).
34 See In re Metriplex, Inc., 23 USPQ2d 1315, 1316-17 (TTAB 1992)
(noting that “the requirements specific to specimens which are
advertising are not applicable” and finding the submitted specimens
acceptable to show use of applicant’s mark in connection with data
transmission services because the specimens showed “the mark as it
appears on a computer terminal in the course of applicant's rendering
of the service” and noting that “purchasers and users of the service
would recognize [applicant’s mark], as it appears on the computer
screen specimens, as a mark identifying the data transmission services
which are accessed via the computer terminal”); TMEP §1301.04(b); see
also In re Zinpro Corp., 2013 TTAB LEXIS 146, at *7 (“[U]nder some
fact patterns, even if it is clear that the specimens of use do not
contain a reference to the services, they are still deemed
acceptable.”); In re Ultimus, Inc., Ser. No. 78688816, 2008 TTAB LEXIS
304, at *7 (Mar. 31, 2008) (“When used in the actual sale of services,
as opposed to their advertising, it is not per se necessary that the
services be referenced, but in such cases it may be necessary to
explain how the mark appears during the rendering of the service and,
therefore, why the purchaser or user of the service would recognize
and associate the mark with the service.”).
35 See In re Metriplex, Inc., 23 USPQ2d at 1316-17; see also In re
Zinpro Corp., 2013 TTAB LEXIS 146, at *7. Compare In re McGowan Publ’g
Co., Ser. No. 77582970, 2013 TTAB LEXIS 364, at *6-9 (June 27, 2013)
(finding the submitted webpage specimens acceptable evidence of use of
the mark for financial and investment services because “a client or
prospective client of applicant's investment advisory services would
view the mark on the web page in close proximity to links for
documents used by applicant in rendering those services (i.e., the
contract between applicant and the client and applicant's Registered
Investment Advisor disclosures)” and “[t]hus, the links to these
documents create an association between the mark and the offered
service activity”), and In re Robert Bosch GmbH, Ser. No. 75473538,
2001 TTAB LEXIS 353, at *2-3 (May 3, 2001) (finding the submitted
specimens acceptable evidence of use of the mark in connection with
training services because the specimens included photographs of
signage bearing the mark outside the applicant's building and at a
display booth referred to as a “demo work station” at applicant’s
headquarters where guests are informed about the identified training
services; noting that “[t]he nature of applicant's service does not
need to be spelled out in greater detail on the specimen”), with In re
R & B Receivables Mgmt., Inc., 2011 TTAB LEXIS 294, at *6-8 (finding
specimen consisting of a photo of signage on, and in front of, the
building in which services are rendered unacceptable as showing the
mark in the course of rendering the services because the sign is not
used in rendering the financial advisory services; noting that the
sign is “merely directing an existing client to applicant’s location”
similar to advertising and that “[u]pon seeing this sign, it could be
literally for anything that one might find in an office park”), and In
re Ultimus, Inc., 2008 TTAB LEXIS 304, at *8-9 (affirming refusal of a
specimen submitted as evidence of use of the mark UNRULY EVENTS for
“providing on-line communications links which transfer the website
user to other local and global web pages featuring software for
workflow automation” because, despite the fact that the wording UNRULY
EVENTS itself served as a hyperlink, there was no mention of the
communications links services on the specimen and no explanation from
the applicant of how the mark would be recognized and associated with
the identified services).
36 See In re Metriplex, Inc., 23 USPQ2d at 1316 (finding the submitted
specimens acceptable based, in part, on applicant’s explanation that
the specimens showed the mark as it appeared on a computer terminal in
the course of rendering the services); see also In re Ultimus, Inc.,
2008 TTAB LEXIS 304, at *7-8 (“When used in the actual sale of
services, as opposed to their advertising, it is not per se necessary
that the services be referenced, but in such cases it may be necessary
to explain how the mark appears during the rendering of the service
and, therefore, why the purchaser or user of the service would
recognize and associate the mark with the service.”).
37 See In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)
(“While the nature of the services does not need to be specified in
the specimens, there must be something which creates in the mind of
the purchaser an association between the mark and the service
activity.”); In re The Wrestling Zone, Inc., Ser. No. 77561949, 2009
TTAB LEXIS 661, at *4-5 (Nov. 2, 2009) (finding the submitted specimen
unacceptable as evidence of use of the mark for pay-per-view and
on-demand television transmissions of live wrestling exhibitions
because the mark was used to advertise a particular entertainment
event and not video-on-demand services, noting that the “reference to
video-on-demand on the specimen is used only in an informational sense
to notify the public of the options available for viewing the
wrestling event”); In re Broad. Architecture, Inc., Ser. No. 77153464,
2009 TTAB LEXIS 97, at *6-10 (Mar. 19, 2009) (finding the submitted
specimen unacceptable for radio broadcasting services because the mark
would be perceived as identifying a radio program and not as a source
indicator for radio broadcasting services).
38 Cf. In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed.
Cir. 2009) ("[T]he test for an acceptable website-based specimen, just
as any other specimen, is simply that it must in some way evince that
the mark is ‘associated’ with the goods and serves as an indicator of
source.” (emphasis added)). The requisite mark-services association is
present when the specimen makes a direct link or connection between
the mark and the identified services. See, e.g., In re LaBellarte,
Ser. No. 76526520, 2009 TTAB LEXIS 399, at *9 (May 29, 2009) (finding
the submitted specimens unacceptable since they lacked direct
mark-services association because the mark, SOFT ROOM, only identified
a proprietary principle or system used in performing the applicant’s
services, and noting that “[t]here is no direct association of ‘soft
room’ with the services listed in the application” and that “‘soft
room’ . . . would not be perceived as a service mark for the editing
and design services mentioned in the specimen; the identification of
soft room as a principle in the text of the specimen precludes a
direct association with the stated services and there is nothing else
in the specimen to make the necessary direct association”).
39 Compare In re Metriplex, Inc., 23 USPQ2d at 1316 (finding the
submitted specimens acceptable based, in part, on applicant’s
explanation that the specimens showed the mark as it appeared on a
computer terminal in the course of rendering the services), with In re
Ingram Micro Inc., Ser. Nos. 78321253 & 78321254, 2011 TTAB LEXIS 371,
at *16-17 (Nov. 15, 2011) (finding the submitted specimens
unacceptable because they “do not show a proper nexus with the
identified services” and the services “are too attenuated from the
proposed mark and are described under different terms”).
40 See TMEP §806.03(c) regarding amending filing basis from §1(a) to
§1(b), and 904.07–904.07(b)(i) regarding requirements for substitute
specimens.
41 See 37 C.F.R. §2.64; TMEP §714.03.
42 See TMEP §§1202.01, 1202.03–1202.04, 1301.02(a),
1301.02(e)–1301.02(f). No specimen refusal should issue if the mark
identifies, for example, both a process and the identified services
and the requisite mark-services association is present. See TMEP
§1301.02(e).
43 15 U.S.C. §§1051, 1052, 1053, 1127; see TMEP §1301.
44 In re Ancor Holdings, LLC, 79 USPQ2d 1218, 1221 (TTAB 2006).
45 Examining attorneys may visit the Trademark Law Library website,
located at
http://ptoweb.uspto.gov/ptointranet/trademarks/lawlibrary/classtech.htm,
which provides links to various websites relating to technological
services, and is searchable by subject matter and classification
number.
46 37 C.F.R. §2.61(b).
47 In re Metriplex, Inc., 23 USPQ2d 1315, 1317 (TTAB 1992) (finding
the submitted specimens acceptable to show use of applicant’s mark in
connection with data transmission services because “we have a
situation where the service are rendered through the means of a
tangible item, namely, a computer terminal, so that the mark can
appear on the computer screen, and the specimens show such use”).
48 See TMEP §§1202.08–1202.08(f) regarding titles of single creative
works and §1301.02(d) regarding titles of radio and television
programs.
25
LA SOBRECARGA DE LAS CUIDADORAS DE PERSONAS DEPENDIENTES ANÁLISIS
Č ESKÝ RYBÁŘSKÝ SVAZ ÚZEMNÍ SVAZ PRO SEVERNÍ MORAVU
EKSISTENSI LAPORAN NILAI TAMBAH SYARI’AH BERBASIS REZEKI OLEH AJI
CHAPTER 12 FORCES IN MOTION NAME PHYSICAL SCIENCE MR
SUPERINTENDENCIA DE BANCA Y SEGUROS LIMA 16 DE MAYO
MELDUNG DER BEVOLLMÄCHTIGTEN PERSONEN UND EINGESETZTEN MITARBEITER DES AUFTRAGNEHMERS
OCR LEVEL 3 CAMBRIDGE TECHNICAL IN BUSINESS UNIT 17
DSE WORKSTATION ASSESSMENT CHECKLIST SCHOOLDEPARTMENT WORKSTATION LOCATION AND ID
REPÚBLICA DE PANAMÁ MINISTERIO DE SEGURIDAD PÚBLICA SERVICIO NACIONAL
SAURABH AGARWAL 03CS1002 DISCUSSION ON “PROBLEMS IN GRAMMAR” THERE