Q: What is required for a trademark or service mark application based on use in commerce?
A: The mark must be in use in commerce on or in connection with all the goods and services listed in the application as of the application filing date. The application must include a statement that the mark is in use in commerce, verified by an affidavit or declaration. If the verified statement is not included with the original application, the applicant must still allege that the mark was in use as of the application filing date.
Q: What is required for a trademark or service mark application based on “intent-to-use”?
A: The application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date. Prior to registration, the applicant must use the mark in commerce on or in connection with all the goods or services specified in the application and file an amendment to allege use or a statement of use.
Q: Do I need to use the mark in commerce even if I am basing the application on a different section of the Trademark Act?
A: Yes, the applicant must use the mark in commerce even if they are asserting a different section of the Trademark Act as a second basis for filing.
Q: Are applicants relying solely on a foreign registration or requesting an extension of protection of an international registration required to have used the mark in commerce prior to registration in the United States?
A: No, these applicants are not required to have used the mark in commerce prior to registration in the United States. However, they will need to file an affidavit or declaration of use at the appropriate times and establish use in commerce or excusable nonuse in order to maintain a valid registration.
Q: What is the meaning of “bona fide use in the ordinary course of trade”?
A: “Bona fide use in the ordinary course of trade” refers to the legitimate use of a trademark in the normal course of a company’s business. This term was added to the definition of “use in commerce” by the Trademark Law Revision Act of 1988 in order to eliminate the practice of “token use,” or using a mark solely to reserve rights in that mark.
Q: How does the meaning of “use in the ordinary course of trade” vary by industry?
A: The meaning of “use in the ordinary course of trade” will vary depending on the specific industry. For example, a company that sells expensive or seasonal products may make infrequent sales, which would still be considered part of the ordinary course of trade. On the other hand, a pharmaceutical company that is awaiting approval from the Food and Drug Administration (FDA) for a drug to treat a rare disease would also be making infrequent sales, but these would still be considered part of the company’s ordinary course of trade.
Q: What factors are considered when determining compliance with the requirement for “bona fide use in the ordinary course of trade”?
A: Some factors to consider when determining compliance with this requirement include the amount of use, the nature of the transactions, and what is typical within the industry. It is important to keep in mind that while “use made merely to reserve a right in a mark” does not qualify as bona fide use, the interpretation of the term should be flexible enough to encompass various genuine uses, such as test market uses or infrequent sales of large or expensive items.
Q: What types of commerce are regulated by the U.S. Congress in regards to trademarks?
A: The U.S. Congress has the power to regulate trademarks that are used in interstate (between states), intrastate (within a single state) that has a direct effect on interstate commerce, and commerce between the United States and a foreign country. Commerce within a U.S. territory, such as Puerto Rico or Guam, is also considered to be regulated by Congress.
Q: What is considered “use in commerce” for the purpose of trademark regulation?
A: In order to be considered “use in commerce,” the mark must have a connection to economic activity and must have a substantial effect on interstate commerce. This can include the use of a mark on goods that are sold to out-of-state customers, the rendering of services to out-of-state customers, or the advertising of services or goods in multiple states.
Q: Does the use of a mark in a foreign country give rise to rights in the United States?
A: No, the use of a mark in a foreign country does not give rise to rights in the United States if the goods or services are not also sold or rendered in the United States. This is because Congress does not have the power to regulate foreign commerce that does not involve the United States.
Q: Who is responsible for determining if a trademark is being used in commerce?
A: The applicant and their attorney are responsible for determining if a trademark is being used in commerce.
Q: Will the examining attorney investigate whether a claimed use in commerce meets the definition of “use in commerce”?
A: No, the examining attorney will normally accept the applicant’s claim of use in commerce without investigating whether the use meets the definition of “use in commerce.”
Q: What happens if the applicant claims that the trademark is being used in a type of commerce that cannot be regulated by the US Congress?
A: If the applicant claims that the trademark is being used in a type of commerce that cannot be regulated by the US Congress, the applicant has not met the requirement for a verified statement of use in commerce that can be regulated by Congress. In this case, the examining attorney must advise the applicant that it appears the mark is not being used in a type of commerce that can be regulated by Congress and require the applicant to either submit a verified statement of use in commerce that can be regulated by Congress or amend the application to show a bona fide intention to use the mark in commerce under section 1(b) of the Trademark Act, if allowed by the regulations.
Q: What if there is evidence or information indicating that the trademark may not be in use in a type of commerce that can be regulated by Congress?
A: If there is evidence or information indicating that the trademark may not be in use in a type of commerce that can be regulated by Congress, the examining attorney must ask the applicant for an explanation or evidence of such use and may require additional information or evidence about the use of the mark.
Q: Can I file to register a trademark or service mark before using it in commerce?
A: Yes, you can file an application to register a trademark or service mark based on a bona fide intention to use the mark in commerce for the specified goods or services. This is outlined in Section 1(b) of the Trademark Act and in 37 C.F.R. §§2.2(l), 2.32(a)(5), and 2.34(a)(2).
Q: What do I need to do in order to register a trademark or service mark?
A: In order to register a trademark or service mark, you must use the mark in commerce for the goods or services listed in the application. You must also file an “allegation of use” document, which can be either an amendment to allege use or a statement of use. This document must state that the mark is being used in commerce, provide dates of use for each class, and include a specimen showing such use for each class.
Q: How do I file an amendment to allege use or a statement of use?
A: You can find information on filing an amendment to allege use in 37 C.F.R. §2.76 and TMEP §§1104-1104.11, and on filing a statement of use in 37 C.F.R. §2.88 and TMEP §§1109-1109.18.
Q: Are there any special requirements for using a mark in commerce for collective trademarks, collective service marks, or certification marks?
A: Yes, the requirements for an applicant’s bona fide intention to use the mark in commerce for these types of marks are described in TMEP §1303.01(a)(ii), §1304.02(a)(ii), and §1306.02(a)(ii), respectively.
Q: When do I need to specify the dates of use for my trademark or service mark application?
A: You must specify the dates of first use of the mark either in the original application or in an “allegation of use” application.
Q: Do I need to verify the dates of use?
A: Yes, the dates of use must be verified with an affidavit or declaration.
Q: Do I need to include dates of use in the original application if I am filing under the “allegation of use” provision?
A: No, you do not need to include dates of use in the original application if you are filing under the “allegation of use” provision. However, you must include them in a later “allegation of use” or “statement of use.”
Q: Can I include dates of use that occurred before the application was filed if I am filing under the “allegation of use” provision?
A: Yes, you may include dates of use that occurred before the application was filed in an amendment to the “allegation of use” or “statement of use.”
Q: Are there different rules for the dates of use for different types of marks?
A: Yes, there are different rules for the dates of use for collective trademarks, collective service marks, collective membership marks, and certification marks.
Q: What is the “date of first use anywhere” in a trademark or service mark application?
A: The date of first use anywhere is the date when the goods were first sold or transported, or the services were first rendered, under the mark in a bona fide manner and in the ordinary course of trade. This applies to both domestic and foreign applicants, regardless of whether the use was local or national, intrastate or interstate, or of any other type. The date of first use of a mark is the same for all applicants, regardless of whether the use occurred in the United States or elsewhere.
Q: Are there any exceptions to the rules for determining the date of first use?
A: Yes, the rules for determining the date of first use may be different for collective trademarks or service marks, collective membership marks, and certification marks.
Q: What is the “date of first use in commerce”?
A: The “date of first use in commerce” is the date when a product or service was first sold or provided under a specific trademark or service mark in a type of commerce that is regulated by the U.S. Congress.
Q: What are the requirements for the “date of first use in commerce”?
A: For a trademark or service mark application, the use of the mark must be bona fide and in the ordinary course of trade.
Q: Can the “date of first use in commerce” be later than the date of the application?
A: No, in a trademark or service mark application filed under Section 1(a) of the Act, the “date of first use in commerce” cannot be later than the date of the application.
Q: What happens if the applicant has not used the mark in commerce on or before the application filing date?
A: The applicant may change the basis of the application to Section 1(b).
Q: Is the “date of first use in commerce” required to receive a filing date in an application based on use in commerce under Section 1(a) of the Act?
A: Yes, the examining attorney must require the applicant to specify the “date of first use and/or date of first use in commerce” in the application. These dates must be supported by an affidavit or declaration.
Q: Can an applicant file an application on the basis of use of a mark in commerce if such use has been discontinued?
A: No, an applicant may not file an application on the basis of use of a mark in commerce if the use has been discontinued.
Q: Are the dates of use for collective trademarks, collective service marks, collective membership marks, and certification marks also regulated?
A: Yes, the dates of use for these types of marks are also regulated.
Q: What is the relationship between the two dates of use in a trademark application or statement of use?
A: The date of first use anywhere and the date of first use in commerce must both be specified in the application or statement of use. If the date of first use anywhere was in a type of commerce regulated by the U.S. Congress, the two dates will be the same. The date of first use anywhere must be earlier than or the same as the date of first use in commerce. If the date of first use anywhere is later than the date of first use in commerce, the examining attorney will request clarification. This requirement applies to all applicants, including foreign applicants, in applications filed under §1(a) or §1(b) of the Act.
Q: How can I change the dates of use listed in my trademark application?
A: To change the dates of use, you must provide an affidavit or declaration that is signed by someone with proper authorization, in accordance with 37 C.F.R. §2.20.
Q: Can I change the dates of use to a date after the application filing date if I applied under §1(a)?
A: No, if you applied under §1(a), you may only change the dates of use to a date that is either earlier or later than the original date, but still on or before the application filing date.
Q: What if I did not use the mark in commerce on or before the application filing date?
A: If you did not use the mark in commerce on or before the application filing date, you may change the basis of your application to §1(b).
Q: Can I change the dates of use to a date after the date the amendment is signed if I applied under §1(b)?
A: No, if you applied under §1(b), you may only change the dates of use to a date that is on or before the date the amendment is signed.
Q: What if I applied under §1(c) or §1(d)?
A: If you applied under §1(c) or §1(d), the dates of use must be on or before the date the allegation of use was signed.
Q: What if I cannot provide proper dates of use?
A: If you cannot provide proper dates of use, you may change the basis of your application to “intent to use” under §1(b), provided you meet the requirements for that basis. However, a registration may not be issued until you file an allegation of use if you change the basis to §1(b).
Q: Can the dates of first use be recorded as being used by a predecessor or related company of the applicant?
A: Yes, if the predecessor or related company used the trademark first and the applicant benefits from this use, the dates of first use may be recorded as being used by the predecessor or related company. This is specified in 37 C.F.R. §2.38(a). It is usually not necessary to provide the name of the predecessor or related company.
Q: How specific should I be when providing a date of first use for my trademark?
A: The USPTO prefers that applicants provide as specific a date as possible. The latest definite date provided by the applicant will be recognized by the USPTO.
Q: Can I use indefinite terms when describing the date of first use for my trademark?
A: Yes, if the applicant is uncertain about the exact date, they may use indefinite terms such as “at least as early as,” “prior to,” “before,” “on or about,” and “in.” However, these terms will not be printed in the Official Gazette or on the certificate of registration.
Q: What date will the USPTO use if I only provide a year or a month and year without a specific day?
A: If the applicant only provides a year, the USPTO will assume the date to be the last day of the year. If the applicant only provides a month and year, the USPTO will assume the date to be the last day of the month.
Q: What should I do if my date of first use in commerce is more specific than my date of first use anywhere, and this results in the date of first use in commerce preceding the date of first use anywhere?
A: If this occurs, the examining attorney will contact the applicant to amend the date of first use anywhere to the same date as the date of first use in commerce.
Q: Is a date of use listed in an application or registration owned by the applicant or registrant considered evidence in an inter partes proceeding?
A: No, a date of use must be established by appropriate evidence in an inter partes proceeding. A date of use listed in an application or registration owned by the applicant or registrant is not considered evidence.
Q: Can I allege future use of a trademark in my application or allegation of use?
A: No, an applicant must attest to dates of use that occurred before the date the application or allegation was signed.
Q: What happens if my application or allegation of use only includes the year or month and year of my first use of the mark, and that date is later than the date the application or allegation was signed?
A: In this case, the United States Patent and Trademark Office (USPTO) will presume that your first use of the mark was on the date the application or allegation was signed.
Q: What happens if my first use date is later than the filing date of my application or allegation of use?
A: If the first use date is later than the filing date, you must provide an affidavit or declaration with an earlier first use date supported by 37 C.F.R. §2.20.
Q: What happens if my application or allegation of use only includes the year or month and year of the date it was signed, and that date is later than my first use of the mark?
A: In this case, the USPTO will presume that the date of signature was on or after the date of first use.
Q: Can I provide dates of first use for individual elements of my composite mark?
A: Yes, you may specify the dates of first use for each separable element of your composite mark. These dates will be included in the certificate of registration for general information. However, you must also provide the dates of first use for the entire composite mark being registered.
Q: Do the dates of first use and first use in commerce listed in a trademark application or statement of use need to apply to every item in the class?
A: No, the dates of first use and first use in commerce do not need to apply to every item in the class. It may be that the mark was first used on various items on different dates, so it would be inconvenient to list the dates for each individual item. There must be at least one item in the class to which the specified dates do apply.
Q: What should I do if the dates of use do not apply to all items in the class?
A: If the dates of use do not apply to all items in the class, you should specify which items the dates do apply to. If you need to amend the identification of goods or services to remove items for which the dates of use apply, you must update the dates-of-use clause to specify the dates that apply to the remaining items.
Q: What will the USPTO assume if I don’t specify which items the dates of use apply to?
A: If you do not provide information about which items the dates of use apply to, the USPTO will assume that the dates apply to all items in the class.
Q: How will the dates of use be published and displayed on the registration certificate?
A: The earliest date listed for a class will be published in the Official Gazette and, if a registration is granted, on the certificate of registration. The Official Gazette and registration certificate will not specify which item the date applies to.
Q: Why are specimens needed in a trademark or service mark application?
A: Specimens are required to show the public how the mark is used and to provide supporting evidence for the claims made in the application.
Q: What is required for an application under section 1(a) of the Trademark Act?
A: An application under section 1(a) must include one specimen for each class, showing the mark being used in commerce in connection with the specified goods or services. If an application is filed without a specimen, the examining attorney will request one with an affidavit or declaration stating that the specimen was used in commerce at least as early as the application’s filing date. If the specimen indicates that the goods have not been “sold or transported in commerce,” the application will be refused.
Q: Is a specimen required for an application under section 1(b) of the Trademark Act?
A: No specimen is required at the time of filing, but an allegation of use including one specimen for each class must be filed before a registration will be granted.
Q: Are specimens required for applications based on sections 44 or 66(a) of the Trademark Act?
A: No specimen showing use in commerce is required for an application based solely on sections 44 or 66(a) of the Trademark Act. However, the examining attorney may request a specimen to determine the applicant’s entitlement to use the mark.
Q: How many specimens are required for a trademark application or an allegation of use?
A: One specimen is required for each class of goods or services listed in the application or allegation of use.
Q: Can a single specimen be used to support multiple classes?
A: Yes, but the applicant must specify which classes the specimen covers.
Q: Can the examining attorney require additional specimens?
A: Yes, the examining attorney may require additional specimens if deemed necessary for the proper examination of the application.
Q: Will the examining attorney make a note in the official record indicating which class(es) the specimen supports?
A: Yes, the examining attorney should make a note in the official record indicating which class(es) the specimen supports.
Q: Do I need to provide a specimen for each item or service in a single class when applying to register a trademark?
A: Generally, no. However, the examining attorney may request additional specimens if the items or services are widely diverse or unrelated.
Q: Are there any exceptions to this rule?
A: Yes, if the goods you are applying to register are a “full line of pharmaceuticals,” the examining attorney will require evidence that you use the mark in connection with all chapters of the World Health Organization’s International Statistical Classification of Diseases and Related Health Problems.
Q: What is a combined or multiple-class application?
A: A combined or multiple-class application is a request to register the same trademark for multiple classes (e.g. goods, services, and/or collective membership organizations) in a single application.
Q: What are the requirements for a multiple-class application filed under §1(a)?
A: If you file a multiple-class application under §1(a), you must provide one specimen (example) of the trademark for each class. If a single specimen can be used to support multiple classes, you should specify which classes the specimen applies to. The examining attorney (the person reviewing your application) does not need multiple copies of the specimen. They will make a note in the record indicating which classes the specimen supports.
Q: Are there any regulations specific to combined or multiple-class applications?
A: Yes, combined or multiple-class applications are regulated by 37 C.F.R. §2.86(a),(b).
Q: How should specimens be submitted in trademark applications, affidavits of use, and responses to Office actions?
A: Specimens should generally be submitted through the Trademark Electronic Application System (TEAS) in a file format accepted by the USPTO.
Q: What should I do if the specimen is not visible in the application due to a technical issue?
A: Contact the [email protected] mailbox to see if the problem can be fixed by resubmitting the file. If the problem cannot be fixed, you must submit the original specimen (or a true copy) along with a statement confirming that it is a true copy of the specimen originally filed through TEAS. Alternatively, you may submit a different specimen along with an affidavit or declaration of use for the substitute specimen.
Q: Are there exceptions to the requirement to submit specimens through TEAS?
A: Yes, specimens may be mailed to the USPTO for non-traditional mark types such as scents or flavors. Submission on paper may also be permitted under certain circumstances, or may be accepted on petition to the Director.
Q: What are the size requirements for specimens filed in connection with a permitted paper filing? A: Specimens should be flat and no larger than 8.5 inches wide by 11 inches long.
Q: Can the USPTO create a copy of the specimen for the official record? A: Yes, the USPTO may create a photocopy or other reproduction of the specimen for the official record and destroy the original.
Q: What are the requirements for reproductions of specimens submitted by applicants?
A: Reproductions of specimens, such as photographs or photocopies, must show the entire specimen or enough of the specimen that the nature of the specimen, the mark, and the goods or services with which the mark is used are identifiable. The mark and all other written matter on the specimen should be clear and legible.
Q: What are the requirements for web page printouts submitted as specimens?
A: Web page printouts must include the URL and access or print date. If the printout includes a photograph of the applied-for mark appearing on the goods or packaging, the URL and access or print date are not required.
Q: Can the examining attorney require an actual physical specimen in certain cases?
A: Yes, if paper filing has not been permitted but an actual physical specimen is necessary for examination, the examining attorney may require it.
Q: What materials might an examining attorney request during the examination of a trademark?
A: An examining attorney may request additional materials if they are necessary for proper examination of the mark. This could include reproductions of the actual product or container if the mark is a configuration of those items, or a complete copy of a publication if it is needed to determine if the mark is merely descriptive of the goods.
Q: What do I need to do if color is a feature of my trademark?
A: If color is a feature of your trademark, or if your trademark consists solely of a specific color, you must submit a specimen showing the use of that color in your trademark application. This can be a color photograph or similar reproduction of the mark.
Q: Do I have to claim color as a feature of my trademark if I submit a drawing or description of the mark that includes color?
A: Yes, if you submit a drawing or description of the mark that includes the use of color, you must claim color as a feature of the mark in your application.
Q: What happens if I submit a specimen that does not show the appropriate use of color?
A: If your specimen does not show the appropriate use of color and color is a feature of your mark, you may be required to submit a substitute specimen that does show the appropriate use of color.
Q: What is the process for registering a trademark for a publication?
A: The process is the same as it is for any other trademark application.
Q: Does the USPTO always require a full copy of the publication or a title page?
A: No, the USPTO does not always require a full copy of the publication or a title page.
Q: Under what circumstances might the examining attorney ask for a copy of the publication?
A: The examining attorney may ask for a copy of the publication if it is necessary for proper examination, as stated in 37 C.F.R. §2.61(b). This might be the case, for example, if the examining attorney needs to determine if the trademark is merely descriptive of the goods or services.
Q: What can be used as a specimen for a trademark registration application?
A: A trademark specimen must demonstrate use of the mark on the goods, their packaging or labels, or in a display related to the goods at the point of sale. In cases where it is not possible to place the mark on these items, another document related to the goods or their sale may be accepted.
Q: Can I submit an artist’s rendering or mockup of the mark as a specimen?
A: No, only a clear copy of an actual specimen meeting the requirements for use on the goods, packaging, or displays can be accepted. This may include a photograph, web page printout, or similar reproduction.
Q: Are there any special requirements for web page specimens?
A: Yes, web page specimens must include the URL and access or print date.
Q: Are there any exceptions to the specimen requirements for goods?
A: Specimens for goods submitted prior to February 15, 2020 may be grandfathered under the old rules until the application is abandoned or registers.
Q: What are the specimen requirements for services?
A: Specimens for services must show the mark being used in the sale or advertising of the services.
Q: Can labels and tags be used as specimens for trademark registration?
A: In most cases, if a trademark is applied to goods or containers by means of labels or tags, and the specimen shows proper trademark usage, then a label or tag affixed to the goods will be accepted as an acceptable specimen. However, if the mark is merely informational or cannot function as a trademark, then registration must be refused even if the specimen shows proper trademark use on labels or tags.
Q: Are shipping or mailing labels acceptable specimens?
A: Shipping or mailing labels may be accepted if they are affixed to the goods or containers and show proper trademark usage. However, they are not acceptable if the mark is used only as a trade name and not as a trademark.
Q: Can a photograph of the goods with the mark on a label or tag be used as a specimen?
A: A photograph of the goods with the mark on a label or tag attached to the goods is preferred, but a label or tag that is not physically attached may also be accepted if it includes information typically found on labels or tags for the goods, such as net weight, volume, UPC codes, lists of contents or ingredients, or other identifying information that is not part of the mark.
Q: Are mock-up labels or tags acceptable specimens?
A: No, labels or tags that appear to be mock-ups, illustrations, or other renderings will be rejected because they do not show the mark in actual use in commerce.
Q: Can temporary labels or tags be used as specimens for trademark registration?
A: If a label or tag is temporary and was used in commerce, it may still be acceptable for trademark registration.
Q: How can I affix a trademark to goods, containers, tags, or labels?
A: You can affix a trademark by stamping it onto the item. This can be done through methods such as metal stamping, rubber stamping, or stenciling.
Q: What types of specimens are acceptable for this type of trademark affixation?
A: Clear and legible photographs, web page printouts, or other reproductions of the stamping or stenciling are acceptable as specimens.
Q: If I’m using a web page printout as a specimen, what additional information do I need to include?
A: If using a web page printout as a specimen, the URL and date accessed or printed must also be included.
Q: What does the term “applied to the containers for the goods” mean?
A: It refers to any type of commercial packaging that is typical for the specific goods as they are traded.
Q: Is displaying the trademark on the standard commercial packaging for the specific goods considered an acceptable specimen?
A: Yes.
Q: Can the trademark be applied to a tag attached to the goods after purchase and then transported in commerce as sufficient use?
A: Yes, according to the case In re Brown Jordan Co.
Q: Can using the trademark on a vehicle used to market the goods to relevant buyers be considered using the trademark on a container for the goods?
A: Yes, as long as this is a typical way to use the trademark for those specific goods.
Q: Can I submit electronic and digital media specimens to the USPTO?
A: Yes, if submission on paper is permitted, the USPTO will accept electronic and digital media specimens saved on portable digital media carriers such as flash drives, CDs, and DVDs.
Q: What file formats are acceptable for electronic and digital media specimens?
A: The files on the digital media carriers must be in a file format designated as acceptable by the USPTO, such as .jpg, .pdf, .wav, .wmv, .wma, .mp3, .mpg, or .avi.
Q: Can I include more than one specimen on a single digital media carrier?
A: In a multiple-class application, you may include more than one specimen on the same digital media carrier. Otherwise, each digital media carrier should only contain specimens for one application.
Q: What should I do if the nature of my specimen is unclear?
A: If the nature of the specimen is unclear, you should provide an explanation of what it is and how it is used.
Q: What are acceptable specimens for trademarks identifying downloadable or recorded computer programs, movies, and videos, or audio recordings?
A: An acceptable specimen might be a photograph or screen shot of a computer display screen showing the trademark for a downloadable or recorded computer program, or a photograph of one or more frames of a movie or video with the trademark. For downloadable computer software, an applicant may submit a specimen that shows the use of the trademark on an internet website, as long as the website creates an association between the trademark and the software and provides enough information for the user to download or purchase the software. A specimen for audio recordings in Class 9 must also include a “download” or similar link on an internet website in order to show that the identified goods are available for download.
Q: Is it necessary for purchasers to see the trademark before purchasing the goods?
A: No, as long as the trademark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce, it is not necessary for purchasers to see the trademark before purchasing the goods. For example, stamping the trademark on a tag attached to the goods after purchase and then transporting the goods in commerce would be sufficient use.
Q: Can specimens for downloadable or recorded software indicate that the software is a “beta” version?
A: Yes, the term “beta” is commonly used in the software field to identify a preliminary version of a product. Although some beta products may not be made available to consumers, others are. Therefore, the presence of the term “beta” on a specimen for downloadable or recorded software does not necessarily mean that the relevant goods are not in actual use in commerce or that the specimen is unacceptable. However, if the specimen indicates that the beta version is not in actual use in commerce, the examining attorney must reject the registration because the applicant has not provided evidence of use of the applied-for trademark in commerce.
Q: What information must be included in specimens that include a web page?
A: Specimens that include a web page must also include the URL and the date accessed or printed. If this information is not included in the initial submission, it must be included in a later response and verified.
Q: How do I show that a sound mark actually identifies and distinguishes my goods/services/collective membership organization and indicates their source?
A: To demonstrate that a sound mark satisfies these requirements, you must submit a specimen that includes a sufficient portion of the audio or video content to show how the mark is used in connection with the goods, services, or collective membership organization.
Q: What are the requirements for the format of the specimen for TEAS applications and other forms?
A: For TEAS applications, as well as response, statement of use/amendment to allege use, petition, and registration maintenance/renewal forms, the specimen must be attached to the TEAS form as an electronic file in a file format accepted by the USPTO, such as .wav, .wmv, .wma, .mp3, .mpg, or .avi. Audio files should not exceed 5 MB in size, and video files should not exceed 30 MB, as TEAS cannot process larger files.
Q: Can catalogs be used as a display associated with the goods being sold?
A: In certain cases, catalogs can be used as a display associated with the goods. This was demonstrated in the case of Lands’ End Inc. v. Manbeck, where a catalog page with a picture of the purses, the mark “KETCH,” and a description of the purses was accepted as a display associated with the goods. To be accepted, the catalog must include a picture or detailed description of the goods, show the mark in association with the goods, and include information on how to place an order (such as an order form or a phone number, mailing address, or email address).
Q: What is required for an advertisement to be considered a display associated with the goods?
A: To be considered a display associated with the goods, an advertisement must include an offer to accept orders or instructions on how to place an order. Simply including a phone number, Internet address, or mailing address as part of corporate contact information is not sufficient. There must also be a picture or detailed description of the goods and the mark must be displayed in association with the goods.
Q: Is it necessary for the specimen to list the price of the goods?
A: No, it is not necessary for the specimen to list the price of the goods.
Q: What is a display associated with goods?
A: A display associated with goods is point-of-sale material that shows the use of a mark in relation to the goods being sold. This can include banners, shelf-talkers, window displays, menus, and similar devices that are designed to catch the attention of potential customers and encourage them to make a purchase.
Q: Do displays have to be physically close to the goods?
A: No, the display does not have to be physically close to the goods. However, it must be related to the sale of the goods in a way that makes an association between the two inevitable.
Q: Are folders, brochures, or other materials that describe goods and their characteristics considered displays?
A: No, folders, brochures, or other materials that simply describe the goods or serve as advertising literature are not considered displays. In order to use such materials as specimens, the applicant must provide evidence of point-of-sale presentation, which must be more than just a statement that the materials were distributed at sales presentations or trade shows. A mere statement that advertising materials are used in connection with sales presentations is not enough to transform those materials into displays.
Q: What is required for a display to be considered associated with the goods?
A: A display must show use of the mark in a point-of-sale context and must prominently display the mark in a way that associates it with the goods. The display must be designed to catch the attention of potential customers and encourage them to make a purchase. To be considered a display, the material must be used in a way that creates an association between the mark and the goods in the minds of consumers.
Q: What is a “display associated with the goods” in relation to web pages?
A: A web page that displays a product can constitute a “display associated with the goods” if it:
- Contains a picture, photograph, or textual description of the identified goods.
- Shows the mark in association with the goods.
- Provides a means for ordering the identified goods.
Q: Is it necessary for a web page to include a picture of the goods to qualify as a “display associated with the goods”?
A: While a visual depiction of the goods is an important consideration in determining whether a submitted specimen sufficiently associates a mark with the source of the goods, a picture of the goods on the web page is not mandatory. A textual description may suffice where the actual features or inherent characteristics of the goods are recognizable from the textual description, particularly if the product is standard. This information is based on the case In re Sones.
Q: Can a web page from a third-party website qualify as a “display associated with the goods”?
A: Yes, a web page from a third-party website may also qualify as a display if it meets the requirements discussed above. For example, a manufacturer of bed linens may rely on a third-party retail vendor’s web page if it includes a picture of the bed linens with the mark and provides point-of-sale means for ordering them. This information is based on the case In re Osterberg.
Q: What information is required to be included with a web page submitted as a “display associated with the goods”?
A: To be accepted by the USPTO, a web page must include the URL and the date it was accessed or printed. This information can be provided directly on the specimen web page or in a later-filed verified statement. If the web page includes a photograph of the mark on the goods or packaging that would otherwise be acceptable as a specimen of use for goods, the URL and access or print date are not required.
Q: Can you provide an example of a web page that would be accepted as a “display associated with the goods”?
A: An example of a web page that would be accepted as a display associated with the goods is a screenshot of a department store web page displaying bedding products with the mark LACOSTE directly associated with the goods, which are pictured and described and have point-of-sale ordering information.
Q: What is required for a display on a webpage to be considered related to the goods being sold?
A: There must be a picture or description of the goods on the webpage. The level of detail required for the description depends on the type of goods being sold. For standard products, a brief description may be sufficient for consumers to understand what the goods are. However, for more complicated or sophisticated products, a more detailed description may be necessary, especially if there is no picture of the goods.
Q: What is required for a web-page display specimen to be considered valid for a trademark?
A: The mark must be clearly associated with the goods in some way and serve as an indicator of the source of those goods.
Q: What factors can influence the association between the mark and the goods on a web page?
A: The placement and prominence of the mark on the page, the overall layout and content of the page, and the overall impression the page gives to the viewer can all influence the association between the mark and the goods.
Q: What can make it difficult for the viewer to make the necessary connection between the mark and the goods?
A: If the mark is too far away from the goods, if there are other marks present that could confuse the viewer, if there is too much unrelated material present, or if there is text separating the mark and the goods, it may be difficult for the viewer to make the necessary connection.
Q: What features of a web page are particularly important for the mark-goods association analysis?
A: The proximity of the mark to the goods, the presence of other marks, and the inclusion of unrelated or only slightly related material are all features that are particularly important for the mark-goods association analysis.
Q: What factors may be considered when determining if a mark is shown in direct association with the goods on a web page?
A: The examining attorney may consider the prominence of the mark. Factors that may contribute to the mark appearing more prominently include: being shown in a larger font size or different stylization or color than the surrounding text, being placed at the beginning of a line or sentence, being positioned next to a picture or description of the goods, or using the “TM” designation with the mark. On the other hand, factors that may contribute to the mark appearing less prominently and being less likely to be perceived as a source indicator for the goods include: being shown in the same font size, stylization, or color as the surrounding text, being buried in a sentence, or being encompassed within descriptive text such that it appears to be a descriptive term for the goods rather than a trademark.
Q: Is the “TM” designation alone enough to transform a mark into a trademark?
A: No, the “TM” designation alone does not mean the mark functions as a trademark if other factors indicate it does not. It is important to consider the web page as a whole when determining if the applied-for mark functions as a trademark for the identified goods.
Q: Do the factors for determining how prominent a mark appears on a web page decide if the mark is used as a trademark or not?
A: No, the factors for determining prominence are not the only things that decide if a mark is used as a trademark. It is important to look at the entire web page to determine if the applied-for mark functions as a trademark for the identified goods.
Q: Can a mark that appears only in the internet browser area as part of a website’s URL, Internet address, or domain name function as a trademark?
A: No, this use of a mark merely identifies the internet location of the website where business is conducted and goods or services are offered. It is not typically recognized as a source-identifying use.
Q: Can a mark that appears in an email address function as a trademark?
A: No, the use of a mark in an email address would be seen as part of the website address where the applicant can be contacted, rather than a trademark.
Q: Can a mark that is located at the top of a web page, separated from the relevant goods by website navigation tabs, function as a trademark?
A: It is possible, but not certain. If the website demonstrates a direct association between the mark and the goods, and meets other requirements for an acceptable display associated with the goods, the mark may still be recognized as a trademark. However, if the mark is only serving as a service mark for retail store services featuring the goods of others, it would not be recognized as a trademark.
Q: What is required for a web page to be considered a display associated with the goods?
A: A web page must provide a way for the goods to be ordered either directly from the web page or from information provided on the web page in order to be considered a display associated with the goods.
Q: What are some examples of ways to order the goods from a web page?
A: Examples of ways to order the goods from a web page include:
- A sales order form
- An online process such as “shopping cart” functionality
- Special instructions on how to order
Q: What other information should be provided on a web page for it to be considered a display associated with the goods?
A: In addition to a means of ordering the goods, a web page should also provide information on:
- Minimum quantities
- Payment methods
- Shipping the goods
- Contact information for placing an order
Q: Is pricing information required for a web page to be considered a display associated with the goods?
A: Pricing information is not necessarily required, but it can be useful in determining whether a web page is a display associated with the goods. The presence or absence of pricing information alone is not determinative.
Q: What are some common ways to order goods online?
A: Some common methods include using buttons or links labeled “shopping cart,” “shopping bag,” “add to cart,” or “buy” that allow consumers to directly purchase the goods.
Q: Are “where to buy” buttons or links acceptable for ordering goods online?
A: No, “where to buy” buttons or links are usually not acceptable as they typically only provide contact information for retailers, wholesalers, or distributors rather than functioning as a direct means of ordering the goods.
Q: Are buttons or links for downloading or purchasing intangible goods considered sufficient ordering information?
A: Yes, buttons or links for downloading or purchasing intangible goods, such as downloadable software, should be considered sufficient ordering information.
Q: Can telephone numbers and email addresses alone be considered a means of ordering goods?
A: In most cases, no. These types of contact information alone will not be considered a means of ordering goods, even if it is common to sell products online or over the phone.
Q: What would make telephone numbers and email addresses a means of ordering goods?
A: These types of contact information may be considered a means of ordering if they are accompanied by specific instructions for placing or accepting orders, such as “call now to buy” or “email your order.” In addition, if a web page provides enough information for a consumer to make a decision to purchase the goods, and the telephone number or email address is prominently placed near the goods or specifically indicates that orders may be placed or accepted via email, it may be considered a means of ordering.
Q: Can a telephone number or email address be a means of ordering if it only appears with the company’s contact information?
A: No, in most cases a telephone number or email address that only appears with the company’s contact information will not be considered a means of ordering.
Q: Are there any exceptions to the rules for telephone numbers and email addresses as a means of ordering goods?
A: In certain cases, a telephone number may be considered a means of ordering if the goods are specialized industrial products or complex goods that require technical assistance in selection or specification and the web page or website provides product information and the record adequately explains the specialized nature of the goods and the industry practice for ordering them.
Q: Are “Contact Us,” “Customize,” and “Configure” buttons and links acceptable means of ordering goods?
A: No, these types of buttons and links are generally not considered acceptable means of ordering goods. They typically redirect consumers to a page that offers more information about the goods or the retailers, wholesalers, or distributors who sell the goods, rather than providing a means to place an order. In order for “Customize” and “Configure” buttons and links to be considered adequate means of ordering, there must be evidence that they allow customers to actually purchase the goods. This is in contrast to a seller’s contact information that appears in advertisements, which does not provide a sufficient means of ordering.
Q: Can a beta website be used as a trademark specimen?
A: In some cases, yes. The fact that a website is labeled as “beta” (meaning it is a preliminary version of a product or service) does not necessarily disqualify it from being used as a trademark specimen. However, if it is determined that the beta version of the website is not being used in commerce, the trademark registration must be refused because the applicant has not provided evidence of the trademark being used in commerce.
Q: Does accessibility of a beta website impact its suitability as a trademark specimen?
A: No, some beta websites may be accessible to the general public while others are not. The accessibility of a beta website does not impact its suitability as a trademark specimen.
Q: If a beta website is being used as a trademark specimen, must it be in actual use in commerce?
A: Yes, if examination of the specimen (the beta website) indicates that it is not in actual use in commerce, the trademark registration must be refused because the applicant has not provided evidence of the trademark being used in commerce.
Q: Can a manual or other printed material be considered part of the product it accompanies?
A: Yes, if the manual or printed material is necessary for the proper use or assembly of the product, then using the trademark on the manual constitutes use of the trademark on the product itself. This was established in the case In re Ultraflight Inc., 221 USPQ 903, 906 (TTAB 1984). The court in this case ruled that an instruction manual is a part of the product, and applying the trademark to the manual is considered to be applying the trademark to the product.
Q: Can the USPTO accept a document other than the goods, packaging, or displays associated with the goods as a specimen for a trademark?
A: Yes, the USPTO may accept another document related to the goods or the sale of the goods as a specimen for a trademark in cases where it is impracticable to place the trademark on the goods, packaging, or displays associated with the goods. This provision applies only in rare circumstances where the nature of the goods makes it genuinely impracticable to use the trademark in the usual way, such as when the goods are natural gas, grain sold in bulk, or chemicals transported in tanker cars.
Q: What are some examples of acceptable specimens in cases where it is impracticable to place the trademark on the goods, packaging, or displays?
A: In such cases, an invoice, bill of lading, or shipping document that displays the trademark for the goods may be accepted as a specimen.
Q: Is it sufficient to simply assert that it is impracticable to use the trademark in the traditional manner?
A: No, merely asserting that it is impracticable to use the trademark in the traditional manner is not sufficient to establish impracticability. The record must demonstrate that the nature of the goods makes it genuinely impracticable to use the trademark in the usual way.
Q: What is required to show that a motion mark effectively identifies and distinguishes the goods or services it represents and indicates their source?
A: An applicant must submit a specimen that demonstrates the motion of the mark and matches the required description of the mark. The specimen should show the entire repetitive motion in order to convey the commercial impression of the mark, and can be a video clip, series of still photos, or series of screen shots. The mark in the specimen must also match the mark depicted in the freeze frames included in the drawing of the mark.
Q: How should the specimen for a motion mark be submitted?
A: The specimen must be attached to the TEAS form in an acceptable electronic file format such as .wav, .wmv, .wma, .mp3, .mpg, or .avi, and should not exceed 5 MB in size for audio files or 30 MB for video files. It must be submitted as part of an application, response, statement of use, amendment to allege use, petition, or registration maintenance/renewal filing.
Q: What is the purpose of the freeze frames included in the drawing of a motion mark?
A: The freeze frames in the drawing of a motion mark depict various points in the movement of the mark and are used to help visualize the mark’s movement. The mark shown in the specimen must match the mark shown in the freeze frames.
Q: How do I apply for a trademark that is a scent, flavor, or similar non-traditional mark?
A: You must mail physical goods with the scent or flavor to the USPTO (United States Patent and Trademark Office). These types of specimens cannot be submitted electronically.
Q: What is required for the physical goods I submit to be an acceptable specimen?
A: The physical goods must contain the actual scent or flavor and match the required description in order to show that the trademark actually identifies and distinguishes the goods and indicates their source.
Q: Can I use a “scratch and sniff” sticker as a specimen for a scent mark?
A: Yes, a “scratch and sniff” sticker may be an acceptable specimen as long as it is part of the packaging for the goods or is used in a way that identifies the goods and indicates their source.
Q: How do I submit a specimen for a non-traditional mark?
A: First, you must provide information about the specimen online using the appropriate TEAS form. Then, you must mail the physical specimen following the guidance in the TMEP (Trademark Manual of Examining Procedure). The TEAS form will have a checkbox that you must select to indicate that you will be submitting a specimen for a non-traditional mark by mail.
Q: Do I need to submit a petition for acceptance of a paper specimen or waiver of the requirement to file electronically?
A: No, you are not required to submit a petition in these circumstances.
Q: Does this exception apply to sound, motion, and color marks?
A: No, this exception does not apply to sound, motion, and color marks. You must submit specimens for these marks electronically.
Q: What types of materials can be used as specimens when registering a trademark?
A: The USPTO requires that specimens demonstrate actual use of the mark in commerce. Acceptable specimens may include photographs of the mark as it appears on goods or their packaging, or advertisements for services featuring the mark.
Q: What types of materials are not acceptable as specimens?
A: The USPTO will not accept the following materials as specimens:
- Photocopies of the drawing required by 37 C.F.R. §2.51
- Artist’s renderings, printer’s proofs, computer illustrations, digital images, or mockups of how the mark may be displayed
- Pictures of the mark that have been digitally created/altered or mocked up to include the mark
These materials do not demonstrate actual use of the mark in commerce.
Q: Why does the USPTO require specimens that demonstrate actual use of the mark in commerce?
A: The USPTO requires specimens that demonstrate actual use of the mark in commerce in order to ensure that the trademark is being used in connection with the goods or services it represents. This helps to prevent confusion among consumers and to protect the integrity of the trademark system.
Q: What is a digitally created/altered or mockup specimen?
A: A digitally created/altered or mockup specimen is an image that is created to show how a trademark might be used in connection with a product or service. These specimens do not prove that the trademark is being actually used in the sale or transportation of goods or the display of services in the normal course of trade, as required by the US Trademark Act.
Q: What is a digitally created specimen?
A: A digitally created specimen is a digital drawing of a product or packaging with the trademark on it.
Q: What is a digitally altered specimen?
A: A digitally altered specimen is an existing image of a product or packaging that has been digitally changed to show the trademark being used on the product, or in an advertisement or website for the product or service.
Q: What is a mockup specimen?
A: A mockup specimen is a digital or non-digital representation of what a trademark would look like on a product, display, or website. These specimens may be made specifically for submission with a trademark application.
Q: What are some characteristics that may indicate a digitally created or altered specimen?
A: Some characteristics that may indicate a digitally created or altered specimen include:
- The product, label, or packaging appears to be a digital rendering rather than a real product.
- The product, label, or packaging is missing typical trade information.
- The mark appears to float above the product or container.
- Features of the item are missing near or around the mark.
- There is pixelization around the mark.
- The mark is not applied to the product in a way that is consistent with the product’s material composition.
- The mark appears on goods known to be marketed under a third-party’s mark.
- The website screenshot displaying the mark includes placeholder text indicating that the website was not in use.
- The website screenshot showing the mark is missing important information, such as a URL or browser tab, and appears to be unpublished (e.g., within other software).
- Identical images displaying different marks or no marks are found.
- The features of the goods suggest that they are used, but the tag or label to which the mark is applied appears new.
- The labeling appears to be crudely applied to containers or plain boxes.
- The mark is superimposed onto signage or other advertising or marketing materials for services.
- A web page for an online marketplace submitted as a display associated with the goods includes indicia indicating that the mark is not in use in the US or was not in use on the dates indicated in the application (e.g., language, currency, price, first available date, ship-to destination).
Q: Is this an exhaustive list of characteristics that may indicate a digitally created or altered specimen?
A: No, this is not an exhaustive list. There may be other characteristics and circumstances not listed that may also indicate that a specimen does not show the use of a mark in commerce.