Specifics on Service Specimens - Meeting Trademark Hurdles

Often our clients will ask about how they can meet the requirements for a "specimen" in their application to register a service mark with the United States Patent & Trademark Office (USPTO), since it's usually easier to understand examples of specimens with physical goods and difficult to understand what can meet the threshold for a service.

Trademark Basics

A "service mark" identifies and distinguishes the services of one party from those of another and indicates their source. To obtain registration of a service mark under Section 1 of the Trademark Act, an applicant must submit a specimen showing the mark as used in commerce.  A mark is deemed to be in “use in commerce” on services “when it is used or displayed in the sale or advertising of services.”

To be acceptable for registration in the USPTO, a service mark specimen must show use of the mark in association with the claimed services in their sale or advertising in commerce, namely interstate, territorial and commerce between the United States and a foreign country. “Interstate commerce" generally refers to buying and selling products, and selling or advertising services, across state borders or internationally.

The way the service mark is used in a specimen must be in such a way that customers would understand the service mark as identifying and distinguishing the services in a way that indicates their source. To be acceptable, a service-mark specimen must show the mark sought to be registered used in a manner that demonstrates direct association between the mark and the services.

For your trademark application, a single specimen as currently used in commerce is required in an application to register a service mark with the USPTO.

The mark on the drawing must be a substantially exact representation of the mark shown on the specimen. Furthermore, the designation must appear sufficiently prominent or stand out in the specimen (e.g., placement, size, or stylization) so that it will be perceived by consumers as a mark.  For instance, if shown in the same font, size, and color as the surrounding text on the specimen, the designation may not be perceived as a source indicator and thus rejected as a trademark.

The following are examples of submissions that are acceptable as specimens for service application purposes.

ACCEPTABLE SERVICE MARK SPECIMENS:

• internet web page/newspaper/magazine/trade journal advertising
• promotional brochures on which the service mark is imprinted
• direct mail advertising materials
• handbills, posters, leaflets, circulars, fliers
• business signage (on storefront, office door or company vehicle - provide photos)
• invoices may be acceptable service mark specimens provided they show the mark and refer to the relevant services.
• menus that show the mark and refer to restaurant services
• business letterhead stationary and business cards that show the mark and contain a clear identification of the services
• a copy of an actual letter to a customer on business letterhead stationery bearing the service mark where the content of the letter indicates the field or service area
• trade show demonstration materials (provide photos)
• static displays in customer showrooms (provide photos)
• billboard advertising (photographs)
• radio/television advertising (provide script/photos)
• gift items such as T-shirts, hats, coffee mugs, etc. on which the mark is imprinted and a clear reference is made to the services (provide photos)

The specimen must show the mark as actually used by the applicant in selling or advertising the services. Therefore, materials such as news articles and mock-ups of advertisements are not acceptable because they do not demonstrate the required use of the mark by the applicant.  In some instances, a specimen or the specimen description may indicate that the specimen is not yet in use in commerce by inclusion of wording such as “internal only,” “printer’s proof,” “website coming soon,” or “under construction.” These types of specimens are typically not acceptable for a trademark application.

The following are examples of submissions that are not acceptable as specimens.

NOT ACCEPTABLE SERVICE MARK SPECIMENS:

• price lists; order forms; announcements; publicity releases; listings in trade directories; business cards; and materials used for the purpose of conducting internal business such as invoices, bills of lading, waybills, inventory sheets, warranties and business letterhead stationery;  and bags and other packaging materials bearing the name of a retail store and used by the store merely for packaging items of sold merchandise.
• bumper stickers which feature only the service mark with no reference to services
• advertising in which the mark is used only for identifying a process or system with no reference to services
• mark used in technical bulletins and data sheets merely to identify and advertise chemicals and not services
• specimens show mark as used to identify a computer program only, and not any services
• the mere advertising of one's products does not constitute service mark usage
• technical bulletins and data sheets that use a mark merely to advertise chemicals, not consulting services
• using a mark on a written proposal while providing technical assistance on how to use the applicant's own manufactured products
• printer's proofs for advertisements, publicity releases to news media, or printed articles resulting from such releases, are not acceptable because they do not show use of the mark in the sale or advertising of the services

Technology Marks

For our technology clients, often the only service is a software interface, website, or mobile applications (“apps”). Because apps are simply the interface that enables the providers of the services to reach the users and render the services, and the users to access those services, screenshots are often the only specimens that can be used.  Common specimens of  screenshots demonstrate the apps delivering the services.  Such a specimen may not always depict proper service-mark use of the mark in connection with the identified services, but it may be acceptable if the displayed screenshot clearly and legibly shows the mark associated with the identified services as the services are rendered or performed via the app.

Similarly, applicants often submit screenshots of sign-in screens as specimens for online services, such as non-downloadable software services and application-service-provider services.  Sign-in screens show that the services are available and the context indicates that they are accessed by inputting credentials. Such a specimen may provide a sufficient basis for accepting the sign-in screen, as long as there is no contradictory information in the record indicating that the mark is not associated with the identified services.

Next Steps

This detailed explanation may seem incredibly complicated, but it is critical to applying for and securing a trademark related to your services. Not fully appreciating these details will often lead to your trademark application being rejected and unnecessary delays in securing your brand. Lloyd & Mousilli attorneys are ready to help you understand the nuances of protecting your intellectual property and  preparing your trademark applications to protect your company and brand.