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Many Trademark Registrations Fail for Lack of a Functional Specimen

Posted by Giselle Ayala Mateus | Dec 09, 2020 | 0 Comments

A trademark registration petition is a request to the USPTO to recognize ownership of a distinctive symbol. As a result, once a trademark is properly registered, the trademark owner has the exclusive right to use the trademark in commerce in connection to the goods or services covered by the trademark registration. In other words, that person has a competitive advantage over others, who may not use the same trademark to distinguish the same kind of goods or services. Given the kind of rights granted by a trademark registration, before the registration process is completed an applicant must demonstrate actual and current use of the trademark in commerce. An applicant uses specimens to do that. 

So... What is a specimen?

A specimen is a piece of evidence that shows how is a trademark used in commerce. Accordingly, specimens must be real, reflect present transactions, and include a date. Use in commerce means that the trademark is actually used to attract consumers or potential "clients" and such use is regular and consistent.

What are the basic requirements of a specimen?

The specimen is the evidence that shows how is the trademark used. Accordingly, the specimen (or "piece of evidence") must show the trademark accurately and in action.  

1. The depiction of the trademark must be accurate or exact

Word trademarks

If the trademark to be registered is a word trademark, it is necessary to clarify whether the trademark will be used with a specific font or style, or not. If no specific style is being claimed, then, the basic requirement of the specimen is that the trademark is easily readable and that the word's components do not change. In this case, if no specific style is being claimed the applicant is at freedom to choose how to depict the trademark. 

 

Other trademarks: Mix trademarks, sound trademarks, audiovisual trademarks, etc.

If the trademark to be registered is not a word trademark, then the applicant must submit specimens that show the trademark exactly as it is depicted in the drawing accompanying the application. In this case, the applicant is claiming additional and very specific elements of the trademark. Accordingly, the applicant's use of the trademark in commerce must be consistent. 

2. The trademark must be shown as it is currently used in commerce. 

An additional and more complex requirement is that the mark must be shown as it is currently used in commerce. For this purpose, an applicant must be careful and show that the mark is actually used to promote or distinguish the goods or services marked. This means, that if an applicant files for the registration of a trademark in connection to coaching services, the mark should be presented showing the effective offering of coaching services, on the other hand, if the mark is registered for toys, the mark should be presented imprinted or stamped in the toys. 

To prove that the mark is used in commerce, a good specimen usually shows to the examiner attorney:

  • The mark printed or stamped on goods. 
  • The mark like it is actually seen by potential buyers (This shows that the mark serves as an indicator of commercial source and that it used to distinguish the applicant's products from others of its competitors).
  • The mark in advertising materials describing the services of the applicant. 
  • The mark in the platforms where transactions are completed (for instance, next to a payment link). 
  • The mark of the website that promotes or sells the applicant's services. 

It is important to understand that a trademark is a symbol, something that potential consumers see and use to associate a product or a service with a particular provider. Accordingly, the specimens must allow the examiner to see the mark "in action", next to the product or service being sold, offered, or promoted. Otherwise, the application will be probably rejected. 

Examples

CYBEYE IMAGE

In the case In re Cybeye, Inc. (TTAB October 19, 2020), the trademark CYBEYE IMAGE was rejected because of the applicant's failure to submit an acceptable specimen showing the applied-for mark in use in commerce. In this case, the trademark at issue was allegedly used to identify services in Class 41: electronic publishing services, namely, publishing of online works of others featuring electronic media, multimedia contents, videos, movies.

The trademark registration was refused and the Trademark Trial Appeal Board (TTAB) explained that in the specimen provided by the applicant there was no reference to the applicant providing these services anywhere. The TTAB expressed: 'For a service mark specimen to demonstrate a direct association between the mark and the services, the mark must be shown “in a manner that would be perceived by potential purchasers as identifying the applicant's services and indicating their source via a ‘direct association... Applicant's first specimens submitted with its Statement of Use show the company name “Cybeye Image Inc.” in connection with software apps available for download on the iTunes and Google Play platforms. They do not advertise or show service mark use in connection with the “publishing of online works of others” or the “electronic publishing of blogs of others.”'

HICCUP

In the case In re Imaginif, Inc. (TTAB November 21, 2019)on the other hand, the mark was registered. In this case, the trademark at issue was a word trademark with no special or unique style or font. The mark to be registered would identify services in Class 41: "Live theatrical presentations; entertainment services in the nature of live theater performances".

According to the examiner attorney, the mark as it was presented on the specimens did not “match” the mark shown in the application's drawing because it was accompanied by another word. However, the TTAB reviewed the rejection and recognized as valid the specimen submitted by the applicants. The TAAB explained that it was clear how would a potential purchaser perceive the services and how the marc was being used. 

"We find that consumers encountering HICCUP as it is used in the specimens would view HICCUP as presenting a “separate and distinct commercial impression... In each instance, the specimens reveal that Applicant's services are provided by the HICCUP family/clan or its members, whether the services are provided in the HICCUP HANGOUT or elsewhere, and whether the services are provided by Rhubarb, Sylvestor, Razberry, and Boyzenberry HICCUP all together, individually, or in some other combination."

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The Law Office of Giselle Ayala Mateus Can Help You!

The registration of a trademark is a process that requires strategy and knowledge. Accordingly, it is preferable to have an attorney to help you! The first step is to schedule a free consultation! However, if you feel ready to proceed, know more about our services here!

About the Author

Giselle Ayala Mateus

Giselle Ayala Mateus is a NY attorney with comprehensive experience in transactional law, creative agreements, business formation, and immigration law. She is also the founder of FOCUS a not-for-profit project focused on supporting entrepreneurs and artists.

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