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.

Three Common Mistakes Made by Startup Companies

  1. Undercapitalization

Before building a tower, consider the cost. Many startup companies start with great intentions but their forecasts for revenue generation are too optimistic and there is not enough capital to sustain the business until it becomes established. Another related issue for companies seeking investors is failure to ask for enough money. Ask for what is needed with an eye toward some rainy days ahead.

 

  1. Failure to Protect Intellectual Property

Patent protection is what most companies think of when it comes to intellectual property and owning a patent is a great way to exclude your competition. However, companies that are not eligible for patent protection often assume that intellectual property is not something for them. In the process, trademarks and copyrights are overlooked. Every company has access to intellectual property rights—it’s just a matter of finding what you can protect for your company. Assume you have something worth protecting, find out what it is, and take the steps to formally protect your intellectual property.

 

  1. Not Finding the Right Market

Most companies offer a product or service that meets the needs of a particular market or group of people. Identifying that group is crucial in establishing early sales and driving a consistent stream of revenue to the company. When a company fails to identify a particular and correct target market, marketing efforts are spread too thin and the company message is not communicated efficiently to the people that need to hear it. Find your niche and drive your message home in your target market.

Patents, Trademarks and Copyrights: What’s the Difference?

The differences between patents, trademarks and copyrights are not obvious to the casual observer, and these terms are often intertwined or misused with one term for the other. To set the record straight, here are some practical ways to think through the differences between these types of intellectual property.

Patents are rights bestowed by the federal government to inventors of a new utilitarian apparatus or process, a new design, or a new plant variety. The patenting process is a formal application process that must be made through the U.S. Patent & Trademark Office. The patent right is the right to exclude others from making, using, selling, offering for sale or importing whatever is claimed in a particular patent. The term of a utility patent is 20 years from the filing date of the application.

Trademarks are symbols used to designate a source of a good or service. An important function of trademark law is to protect the consumer so that consumers can be confident in the sources from which they buy goods or services. No formal application process is required to obtain trademark rights. However, there are many good reasons to consider taking formal steps with the U.S. Patent & Trademark Office to protect your trademark through a formal application process. Trademarks have no expiration date.

Copyrights protect the expression of information when such information is placed in a tangible medium of expression. Examples include photographs, art work, music, books and computer code. No formal process is required to obtain copyrights in your original works of authorship but, as with trademarks, there are many good reasons to consider taking formal steps to register your copyright. Compared with patents and trademarks, the registration of copyrights is relatively inexpensive. The term for a copyright is typically the author’s life plus 70 years.

Do You Need To Register Your Trademark?

Under the common law, trademark rights arise by use alone, so it is possible to gain trademark rights in a trademark by simply beginning to use it for your goods/services. However, there are a number of benefits to hiring a trademark attorney and registering your trademark at the federal level.

The first of these benefits is a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide for your listed goods/services. Another benefit is the public notice function of being able to use the registration symbol, ®, to demonstrate that you have a federal registration.

Another consideration prior to launching a brand of goods or services is to have a clearance search to see if your mark is available for your selected goods/services. Often, businesses launch and invest money in marketing for a particular mark only to find out later that the mark is already in use by another company. This realization sometimes comes in the form of a cease and desist letter from the owner of the trademark who has priority of use. This can cause a great deal of waste, all of which can be avoided by investing in a preliminary trademark search.

And all trademark searches are not equal. Simply searching for federally registered marks may miss vital information. For example, another company may have a state registration but not a federal registration. The state registration can be just as dangerous as a federal registration. In fact common law trademark use can be used to cancel federal trademark registrations if the common law user has priority and there is a likelihood of confusion between the applicable trademarks. As such, it makes sense to hire a professional to conduct a comprehensive clearance search covering federal, state and common law trademarks. If the search is clear, the next step should often be to attempt to register your trademark at the federal level and enjoy the benefits of a federal trademark registration.