Work for a number of clients on trademark matters has inspired this post.  We have received positive feedback on Trademark Applications filed in the US Patent and Trademark Office (USPTO) in the form of a Notice of Allowance (NOA).  Where we had filed the Trademark Applications as Intent-to-Use (ITU) Trademark Applications, our next step to secure registration of the trademark will involve filing of a Statement of Use (SOU) and Specimen.

Unconference Talk on November 8, 2009

Welcome, readers in attendance or otherwise referred to my blog from my talk on “Q&A Intellectual Property Law” in an Unconference Session for SocialDevCamp Chicago.

Trademark Primer

For background on trademarks beyond the following brief description from an earlier post, kindly see specific topics by clicking on my blog categories or inserting keywords in the search box to retrieve my earlier posts.

Trademark Definition from Earlier Post

A trademark is a source identifier.  The trademark lets the public know the source of particular goods or services offered under the trademark.  Trademark protection may be pursued based on actual or intended use of the mark in commerce with the particular goods or services. The circle-R symbol signifies federal registration under US trademark law.  Irrespective of federal trademark prosecution, if any, the designations TM and SM are available for trademarks and service marks.  Such unregistered marks may have protection limited to the geographical area of use, or reasonably expected geographical areas of expansion, for the particular goods or services.

Status of Trademark Prosecution

To understand if your Trademark Application is in the particular situation I have introduced as being allowed and needing submission of a Statement of Use and  Specimen, you may insert your Trademark Application Serial Number into the search box at Trademark Applications and Registrations Retrieval (TARR) http://tarr.uspto.gov/.  Upon retrieving the Latest Status Info for your Trademark Application, you would look under “PROSECUTION HISTORY” for the item “Noa Mailed – SOU Required From Applicant.”  The provided guidance is:

NOTE: To view any document referenced below, click on the link to “Trademark Document Retrieval” shown near the top of this page.

We may download the document “Notice of Allowance” which states:

You filed the trademark application identified below based upon a bona fide intention to use the mark in commerce. You must use the mark in commerce and file a Statement of Use (a.k.a. Allegation of Use) before the USPTO will register the mark. You have six (6) MONTHS from the ISSUE DATE of this Notice of Allowance (NOA) to file either a Statement of Use, or if you are not yet using the mark in commerce, a Request for Extension of Time to File a Statement of Use (“Extension Request”). If you file an extension request, you must continue to file a new request every six months until the Statement of Use is filed. Applicant may file a total of five (5) extension requests. FAILURE TO FILE A REQUIRED DOCUMENT DURING THE APPROPRIATE TIME PERIOD WILL RESULT IN THE ABANDONMENT OF YOUR APPLICATION. Please note that both the “Statement of Use” and “Extension Request” have many legal requirements including fees. Therefore, we encourage use of the USPTO forms, available online at http://www.uspto.gov/teas/index.html (under “File a PRE-registration form”), to avoid the possible omission of important information.

Extension of Time

In the event you are unable to currently obtain a use of your trademark in US interstate commerce, you may pursue Filing Extensions of Time in six month increments. As listed above, up to five iterations of the six-month Extensions of Time are available.  Each Extension of Time needs to be filed before expiration of the current period filing deadline, along with the corresponding USPTO Trademark Processing Fee for “Filing a Request for a Six-month Extension of Time for Filing a Statement of Use under §1(d)(1), per class.”  To maintain prospective rights in the mark, we would file the Extension of Time and then later make another decision before expiration of the live window to file either: the needed materials; or an additional Extension, as remains available.

Statement of Use and Specimen

The next step toward registration of your trademark is to provide:
1)      a specimen of your trademark showing use in US interstate commerce with the goods listed in your trademark application;
2)      the date of your first use of the trademark anywhere with the listed goods or services; and
3)      the date of your first use of the trademark in US interstate commerce with the listed goods or services.

Use in Commerce

The use of your trademark needs to be a bona fide use *in commerce* which means having your business proceeding in US interstate commerce using your mark for the identified goods or services.  Your use of the trademark preferably would be for all the goods or services listed.  In the event your use of the trademark were for less than all the goods or services listed, then we would strike the goods or services that are *not* met by your showing of use.  If we would move forward without plans to show use of the stricken goods or services, then your trademark would become registered for only the goods or services for which you have shown use.

We will file a Statement of Use listing the dates of use of your Trademark in commerce.  We will insert the dates in the following text about use of your trademark in US commerce:

This Allegation of Use is being filed after a Notice of Allowance has issued.   For International Class _____: Applicant, or Applicant’s related company or licensee, is using the mark in commerce on or in connection with the goods/services identified in the Notice of Allowance.

The mark was first used by Applicant, or Applicant’s related company or licensee, at least as early as _____, and first used in commerce at least as early as _____, and is now in use in such commerce.  Specimen(s) showing the mark as used in commerce and an appropriate fee are submitted with this Statement.

The governmental fee for filing the Statement of Use (SOU) is the USPTO Trademark Processing Fee for “Filing a Statement of Use under §1(d)(1), per class.”

Specimen Form – Software Goods

A JPG image, or PDF, can show use of your trademark with the identified goods or services. We are now arriving at the intended gist of this blog post, with a sample focus on a trademark for goods rather than services, and specifically software goods.  The discussion so far applies across the board to many types of marks for goods or services.  A particular angle exists on nailing down the specimen for a number of software goods.

A couple of possibilities come to mind:  a) a screen shot of the mark as actually used in the software; or b) the mark shown on packaging for the product.

Specimen Qualifications

Rather than produce an exhaustive list, I am pasting below a few passages from the Trademark Manual of Examining Procedure (TMEP) that describe acceptable and unacceptable specimens.  As always, kindly let me know if you wish additional explanation.

Acceptable Specimens

US TMEP § 904.03 Material Appropriate as Specimens for Trademarks

For a trademark application under §1(a), allegation of use in an application under §1(b), or affidavit of use under §8 or §71 of the Trademark Act, the specimen must show the mark as used on or in connection with the goods in commerce. A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods.

US TMEP § 904.03(c) Commercial Packaging

The terminology “applied to the containers for the goods” means applied to any type of commercial packaging that is normal for the particular goods as they move in trade. Thus, a showing of the trademark on the normal commercial package for the particular goods is an acceptable specimen.

Unacceptable Specimens

US TMEP § 904.04(b) Advertising Material

Advertising material is generally not acceptable as a specimen for goods.

Governmental Works Reproducible

In case you are wondering about my reproduction of the text above as work of the US Government, kindly note the following general pointer in my post on Copyright Fair Use:

17 U.S.C. § 105 eliminates copyright protection for any work of the US Government.

Text Copyright © 2009 Bob Brill

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