18 Comments · Posted by in assignment, budgets, business method patent, business sense, clearance, client prospects, competitive advantage, copyrights, cybersquatting, domain names, freedom to operate, idea-expression dichotomy, licensing, non-disclosure agreement (NDA), non-provisional patent, open source software, ownership, patent preparation, patentability search, patentable subject matter, patents, priority date, proprietary software, provisional patent, software, trade secrets, Trademark Acceptable Identification of Goods & Services, Trademark Applications and Registrations Retrieval (TARR), Trademark Document Retrieval (TDR), Trademark Electronic Search System (TESS), trademark registration, Trademark Status & Document Retrieval (TSDR), typosquatting, utility patent, Web 2.0
12 Comments · Posted by in breach of confidence, business sense, claim amendment, claim construction, competitive advantage, contract, copyright derivative works, copyright exhaustion, copyright fair use exception, copyright license, copyright merger doctrine, copyright registration, copyright substantial similarity, corporate names, cybersquatting, design trademark, first-sale doctrine, freeware, GNU General Public License (”GPL”), GPLv2, GPLv3, idea-expression dichotomy, identification of goods, licensing, likelihood of confusion, Madrid Protocol, open source software, original work of authorship, patent doctrine of equivalents, patent enforcement, patent exhaustion, patent infringement, patent license, patent prosecution, patentable subject matter, patenting incentives, proprietary software, prosecution history estoppel, prosecution techniques, public domain, trade name, trade secret misappropriation, trademark license, trademark portfolios, trademark registration, typosquatting, Uniform Trade Secrets Act (UTSA), utility patent, word trademark, wrongful disclosure
This post picks up the discussion of trademark specimens with consideration of services (“service marks”), where my previous post had left off after discussing trademark specimens for goods.
Performance, Sale, or Advertising
The “rendering” shown by specimens may include the performance, sale, or advertising of the services provided with the mark. A service mark may be used in commerce by the performance of services. Further, a service mark is deemed to be in “use in commerce” on services “when it is used or displayed in the sale or advertising of services.” 15 U.S.C. § 1127. The specimen must show an association between the mark and the services for which registration is sought. US TMEP § 1301.04(b).
A service mark specimen must show the mark as actually used in the rendering of the services recited in the application. 37 C.F.R. § 2.56(b)(2). A service mark specimen must show use of the mark in a manner that demonstrates direct association between the mark and the services, so potential purchasers would perceive the mark as identifying the applicant’s services and indicating their source. US TMEP § 1301.04(a).
For specimens showing the mark used in performing the identified services, the services need not be explicitly referenced to establish the requisite direct association. Rather, direct association may be:
- Indicated by the context or environment in which the services are performed;
- Inferred based on the consumer’s general knowledge of how certain services are provided; or
- Inferred from the consumer’s prior experience in receiving the services.
So, the context in which the services are provided and consumer knowledge and experience serve to create an inference of the services, without an explicit textual reference to the services.
For specimens showing the mark used in advertising the identified services, the specimen must explicitly reference the services to establish the requisite direct association. While the services need not be stated word for word identically with the application, a sufficient reference to the services themselves, or a general reference to the trade, industry, or field of use, is required.
- For example, use of the word “design” is a sufficient reference to “commercial art design” services.
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. The more explanation the applicant provides, the more helpful it is to the examining attorney’s analysis.
- For example, a description stating that a specimen comprises a title screen of a software program 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 desired, further review is available by download of the USPTO’s Word document “Examination Guide 3-14, Service-Mark Specimen, August 2014″ (published September 2014).
Text Copyright © 2014 Bob Brill. All rights reserved.