Jan
23

Don’t Lose Out on Getting a Registered Trademark or Service Mark by Filing an Unacceptable Specimen!

INTRODUCTION

The scenario:  An applicant files an application for a registered trademark with the USPTO and the proposed mark meets the following requirements for obtaining a registered trademark: no likelihood of confusion with existing registered marks plus the mark is not merely descriptive or generic.   So far so good.  But what if the applicant does not provide an appropriate specimen to the USPTO demonstrating how the otherwise acceptable mark is used in interstate commerce?  The registered mark will not be granted even though the mark itself was found to meet the other criteria for registration.

Although relatively uncommon, a “wrong” specimen situation that involves appeal to the Trademark Trial and Appeal Board (“TTAB” or “Board”)  does occasionally arise as the TTAB’s precedential decisions in In re Kohr Brothers, Inc.  (decided Feb. 9, 2017) and In re Pitney Bowes (decided Jan. 10, 2018) remind us. In the former case, the TTAB sided with the examining attorney and found that the provided specimen for a trademark application was inadequate for showing usage of the mark in interstate commerce.  In the latter case, the TTAB found that the Applicant’s substitute specimen for a service mark would allow the consumer to identify the mark with the offered services.

Specimens for goods and services have different requirements.  For service marks, business cards, website screen shots, brochures, etc. are generally accepted as specimens providing the specimens indicate the types of services being offered, show the mark itself, and designate the source of the services (i.e., the person or business entity providing the services under the mark).   These days, screen shots of websites are often submitted as specimens for service marks.

For trademarks, the specimen must have an association with the actual goods specified in the trademark application.   Section 45 of the Trademark Act states:

A mark is deemed to be in use in commerce on goods when (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on the documents associated with the goods or their sale; and (B) the goods are sold or transported in commerce. 

An example of an appropriate “specimen” document is a package insert included with a clinical assay kit consisting of small vials of reagents.

The In Re Kohr Brothers, Inc. Decision

In In re Kohr Brothers the Applicant’s word mark for CONEY ISLAND BOARDWALK CUSTARD had received provisional approval as an intent-to-use application.  However, the examining attorney subsequently refused to register the mark because the proffered specimen appeared to be mere advertising material.

The Applicant had submitted as its specimen a photograph of a sign posted within its small shop (basically a boardwalk stand) which it asserted was an appropriate “display” specimen.  The examining attorney disagreed and the appeal ensued.  The Board first noted that “[s]ection 45 of the Trademark Act does not define the term “displays associated therewith, and . . . the Board must make a case-by-case determination of whether a particular use asserted to be a ‘display’ is adequate to demonstrate use in commerce.”  Slip opinion at 3.

The Board concluded that the display specimen did not demonstrate use in commerce for several reasons.  First, the submitted specimen included a picture of the goods (a cone with presumably custard).  The specimen also included a stylized ferris wheel on the right.  Yet, the application had been for the word mark CONEY ISLAND BOARDWALK CUSTARD.  The Board found that the depiction of the cone is more likely to be perceived as part and parcel of a composite word and design mark than as an unmistakable indication of the Applicant’s goods.  Slip opinion at 6.  That is, the specimen did not truly reflect the mark actually specified in the application.

Second, the specimen photograph was of a small sign that was posted on a wall opposite the counter where customers placed their orders and adjacent to governmental issued licenses for the business.    The Board opined that the placement of the specimen was “hardly a place where the merchant would place material intended “ ‘to catch the attention of purchasers and prospective purchasers as an inducement to make a sale.’ ” Slip opinion at 7 quoting TMEP § 904.03(g).  As such the Board held that the specimen cannot be considered as a display establishing a ready connection between the mark and the goods and affirmed the examining attorney’s refusal to register the mark.  Slip opinion at 8.

The In Re Pitney Bowes Decision

In In re Pitney Bowes, the mark was a logo for various services involving mail services.  The Applicant submitted screen shots of a website as its specimen.  The examining attorney refused registration on the ground that the specimen did not show the Applicant’s mark in use in connection of any of the recited services in the application.  The situation was complicated by the fact that the webpage described a self-service kiosk that consumers could visit to mail and ship items.  Although the kiosk was provided by Pitney Bowes, the examining attorney contended that Pitney Bowes itself was not performing the mail-related services itself.   The screen shot did show the name of the service provider, Pitney Bowes next to the logo mark thereby establishing a “linkage” between the mark owner and the mark readily ascertainable by the consumer.

The situation was further complicated by the fact that the webpage referenced third-party services such as those of the United States Postal Service.  The examining attorney understood this fact to mean that the only services provided through Pitney Bowes’ kiosk were not services actually being performed by Pitney Bowes.

Pitney Bowes then offered a substitute specimen showing a webpage referring to automated shipping software. i.e., a good.  The examining attorney again found that the specimen failed to demonstrate that the Applicant was providing the services listed in the application.  Slip opinion at 5.  Instead, the Applicant was providing a good that assisted consumers in mailing and shipping and ship letters and packages.  Slip opinion at 7.

Pitney Bowes appealed the matter to the Board and won.  In siding with Pitney Bowes, the Board emphasized the fact that the company’s attorney had sent a letter to the examining attorney during the prosecution process that Pitney Bowes does provide some of the application’s referenced mailing services in that its employees pick up letters and packages left by users in the kiosk receptacle and deliver them “into the mail stream.”

Precedent caused the Board to find that consideration must be given to explanations offered by the Applicant which clarify the nature, content, or context of use of the specimen that are consistent with what the specimen itself shows.  Slip opinion at 8.  Here, even though the examining attorney had reasonably found the first submitted specimen unclear as to whether the Applicant itself provided the mailing services listing in the application, the Applicant’s attorney had adequately clarified the services performed by the Applicant to establish that there was a direct association between the mark and at least some of the services in the class.  The first specimen was deemed acceptable by the Board because it demonstrated the use of the logo mark in a manner that “creates in the minds of potential consumers a direct association between the mark and at least some of the services in the class.”  Slip opinion at 9.

TAKE HOME POINTS

  1. An improper specimen can prevent registration of a mark even though the mark meets all of the other criteria for registration.
  2. Specimens must clearly show an association between the mark actually presented in the application and the associated goods/services. 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 as the In re Kohr Brothers decision demonstrates.
  3. The mark needs to be readily ascertainable by the consumer to allow the consumer to associate the mark with the goods or services. In In re Kohr Brothers, placement of a sign with the actual mark right on or right next to counter frequented by consumers such that consumers could readily see the mark may have been acceptable.  So would some type of cone wrap or disposable cup for holding a scoop of the custard which included the mark and reference the business providing the product.
  4. With website specimens, it is important that the mark be present on the webpages as well as the name of the business/individual providing the service. Additionally, any service mark specimen must include the mark as presented in the application and specify the services being provided under the mark.
  5. Webpage screen shots may be provided as specimens for the goods listed in a trademark application but certain criteria must be met.
  6. It is a good idea to assess the reasonableness of a specimen before submitting it to the USPTO to ensure that it will meet specimen requirements.   If the application is for an intent-to-use application and not filed by a trademark attorney, the applicant may nevertheless wish to consult with a trademark attorney concerning future specimen requirements if and when a Statement of Use is to be filed to secure registration of the applied-for mark should a Notice of Allowance issue.   Most intent-to-use applicants will be “developing” specimens after the application is submitted to the USPTO and have the time to do it right.

 

 

© 2018 by Troy & Schwartz, LLC

WE THANK YOU FOR READING THIS BLOG.  HOWEVER, THE FOREGOING IS NOT LEGAL ADVICE AND IS PRESENTED FOR INFORMATIONAL PURPOSES ONLY.  IF YOU ARE CONTEMPLATING ANY ACTION THAT MAY HAVE LEGAL CONSEQUENCES, YOU SHOULD CONSIDER CONSULTING WITH AN ATTORNEY.