Three Mistakes When Selecting a Trademark Specimen

An important component of a trademark application is the specimen. For both use-based trademark applications filed under § 1(a) and intent-to-use applications filed under § 1(b), the application must include a specimen showing how the applicant uses the mark in commerce for each class of applied-for goods or services.

While filing a trademark specimen should be relatively straightforward, here are three mistakes to avoid when selecting a trademark specimen.

1. Using a specimen that fails to show use of the applied-for mark as a trademark

The purpose of a trademark is to function as a source indicator for consumers. Specimens that show a mark being used as part of a sentence, such as to refer to the goods or services being offered under the mark, that specimen will likely fail.

A recent example of this issue arose in In re Graystone Consulting Associates, Inc., Ser. No. 85913509 (May 12, 2015)In Graystone, the applicant attempted to submit the below specimen as proof of use of its WALK-IN SHOPPER mark in connection with “business training consultancy services.”

SHOPPERS

The Trademark Trial and Appeal Board held that the specimen did not show a direct association between the mark and the applied-for services. Instead, the mark was used in lower case letters (“the walk-in shopper”), did not stand out from the surrounding text, and referred to individuals as “walk-in shoppers.” This use failed to create the requisite association of the mark with the applied-for services.

2. Using a specimen that shows an altered version of the mark

The mark of the application and mark of the specimen must be substantially exact representations of each other. The USPTO will typically find that if the mark of the application is not a substantially exact representation of the specimen, the specimen fails to show use of the mark in connection with the applied-for goods or services.

Defects related to altered versions of a mark may include plural or compound versions of the mark in the specimen. If the mark includes a design element, minor variations in the design or portions of a design being cut off of a label or tag will raise issues as to whether the mark is a substantially exact representation of the mark shown in the specimen.

3. Incorrectly filing an advertisement as a specimen

Often one of the most readily available specimens is an advertisement or screenshot of a web page advertising a particular good or service. However, advertisements may only be used in specific situations, and applicants must be careful as to when an advertisement may be filed as a specimen.

When a trademark is filed in connection with goods, mere advertisements of those goods are usually unacceptable as an appropriate specimen. There are some limited exceptions to this rule, such as using point of sale materials, but in general specimens that show the applied-for goods bearing the mark provide the best specimen.

Advertisements are usually acceptable to show use of a service mark. When using an advertisement for services, applicants must ensure that the services have actually been offered in commerce before filing a specimen that alleges use of the service mark. The Court of Appeals for the Federal Circuit recently made the importance of this rule clear in Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015). The applicant filed the following web page screen shot as proof of use of its PLAYDOM mark for applicant’s services.

playdomspecimen

 

The screen shot advertised the applicant’s service, but during litigation it was discovered that the applicant had not actually provided its services when it filed the specimen. As a result, the trademark registration was cancelled.

While some of these mistakes may be corrected during the application process, in some cases these mistakes can lead to an application becoming abandoned or later invalidated during litigation.

Patent Infringement Liability for Component Manufacturers

A component supplier may manufacture a particular component to be used as part of a customer’s larger system or device and expect that any potential infringement liability would reside with the customer. However, patent holders frequently pursue not only direct infringers but also the infringer’s suppliers in patent infringement lawsuits, seeking to recover damages from all parties involved. These threats of patent infringement catch many component suppliers by surprise because suppliers may not expect that they could be liable for uses of its components by its customers downstream in commerce.

The Patent Act provides a cause of action for “contributory” infringement, under which a supplier of a component that constitutes a material part of a patented invention may be liable for contributory infringement. Finding contributory infringement requires showing that the supplier knew that the supplier’s component was being used in a product that infringed the patented invention. Plaintiffs will often attempt to establish the knowledge requirement through a cease and desist letter to suppliers.

What does this mean for suppliers? It means that suppliers and manufacturers should not simply rely on their customers to do due diligence with respect to any potential infringement issues. Suppliers should consider performing at least a cursory review of potential infringement issues before supplying its components to customers. If a supplier learns of a patent that may be asserted against them, an opinion regarding non-infringement and invalidity should be obtained from competent counsel.