The Trademark Act of 1946 provides for registration of trademarks, service marks, collective trademarks, and service marks, collective membership marks, and certification marks. 15 U.S.C. §§1051, 1053, and 1054. The language of this Manual is generally directed to trademarks. Procedures for trademarks usually apply to other types of marks, unless otherwise stated. This chapter is devoted to special circumstances relating to service marks, collective marks, collective membership marks, and certification marks.
Section 45 of the Trademark Act, 15 U.S.C. §1127, defines "service mark" as follows:
The term "service mark" means any word, name, symbol, or device, or any combination thereof--
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
Therefore, to be registrable as a service mark, the asserted mark must function both to identify the services recited in the application and distinguish them from the services of others, and to indicate the source of the recited services, even if that source is unknown. The activities recited in the identification must constitute services as contemplated by the Trademark Act. See TMEP §§1301.01–1301.01(b)(vi).
If a proposed mark does not function as a service mark for the services recited, or if the applicant is not rendering a registrable service, the statutory basis for refusal of registration on the Principal Register is §§1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§1051–1053, 1127.
See TMEP §1303 concerning collective service marks.
A service mark can only be registered for activities that constitute services as contemplated by the Trademark Act. 15 U.S.C. §§1051 -1053, 1127. The Trademark Act defines the term "service mark," but it does not define what constitutes a service. Many activities are obviously services (e.g., dry cleaning, banking, shoe repairing, transportation, and house painting).
The following criteria have evolved for determining what constitutes a service: (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service. In re Canadian Pac. Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Res., Inc., 218 USPQ 829 (TTAB 1983) ; In re Landmark Commc'ns, Inc., 204 USPQ 692 (TTAB 1979) .
A service must be a real activity. A mere idea or concept, e.g., an idea for an accounting organizational format or a recipe for a baked item, is not a service. Similarly, a system, process, or method is not a service. In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) ; In re Citibank, N.A., 225 USPQ 612 (TTAB 1985) ; In re Scientific Methods, Inc., 201 USPQ 917 (TTAB 1979); In re McCormick & Co., 179 USPQ 317 (TTAB 1973). See TMEP §1301.02(e) regarding marks that identify a system or process.
The commercial context must be considered in determining whether a real service is being performed. For example, at one time the activities of grocery stores, department stores, and similar retail stores were not considered to be services. However, it has long been recognized that gathering various products together, making a place available for purchasers to select goods, and providing any other necessary means for consummating purchases constitutes the performance of a service.
To be a service, an activity must be primarily for the benefit of someone other than the applicant. While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others. In re Reichhold Chems., Inc., 167 USPQ 376 (TTAB 1970) ; see TMEP §1301.01(b)(i). Similarly, a company that sets up a personnel department to employ workers for itself is merely facilitating the conduct of its own business, while a company whose business is to recruit and place workers for other companies is performing employment agency services.
The controlling question is who primarily benefits from the activity for which registration is sought. If the activity is done primarily for the benefit of others, the fact that applicant derives an incidental benefit is not fatal. In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985). On the other hand, if the activity primarily benefits applicant, it is not a registrable service even if others derive an incidental benefit. In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987) (contest promoting applicant’s goods not a service, even though benefits accrue to winners of contest); City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1676 (TTAB 2013) (finding that intranet website was used solely for internal purposes and that respondent was primary beneficiary); In re Alaska Nw. Publ'g Co., 212 USPQ 316, 317 (TTAB 1981) (stating that "[t]he that the activities and operations associated with the production, advertising or sale of the product may be indirectly beneficial to purchasers of the product is immaterial to the question of registrability of the mark as a service mark").
Performing research and development, or other routine or expected activities, in the production or sale of one’s own goods, and not for the benefit of others, are not services for purposes of service-mark registration. See In re Dr. Pepper Co., 836 F.2d at 509, 5 USPQ2d at 1208 ("[I]t has become a settled principle that the rendering of a service which is normally ‘expected or routine' in connection with the sale of one's own goods is not a registrable service whether denominated by the same or a different name from the trademark for its product. This interpretation is a refinement of the basic principle that the service for which registration is sought must be rendered to others."); In re Florists’ Transworld Delivery, Inc., 119 USPQ2d 1056, 1063 (TTAB 2016) (finding applicant’s provision of information regarding flowers and conducting promotional events to promote the sale of its flowers did not constitute a separately registrable service, but were merely incidental to the production or sale of the goods).
Collecting information for the purpose of publishing one’s own periodical is not a service because it is done primarily for the applicant’s benefit rather than for the benefit of others. See TMEP §1301.01(b)(iii).
Offering shares of one’s own stock for investment is not a service because these are routine corporate activities that primarily benefit the applicant. See TMEP §1301.01(b)(iv). On the other hand, offering a retirement income plan to applicant’s employees was found to be a service, because it primarily benefits the employees. Am. Int’l Reins. Co. v. Airco, Inc., 570 F.2d 941, 197 USPQ 69 (C.C.P.A. 1978) .
Licensing intangible property has been recognized as a separate service, analogous to leasing or renting tangible property, that primarily benefits the licensee. In re Universal Press Syndicate, 229 USPQ 638 (TTAB 1986).
See TMEP §1301.01(b)(vi) regarding conducting clinical trials.
In determining whether an activity is sufficiently separate from an applicant’s principal activity to constitute a service, the examining attorney must first ascertain the nature of the applicant’s principal activity under the mark in question (i.e., the performance of a service or the provision of a tangible product). The examining attorney must then determine whether the activity identified in the application is in any material way a different kind of economic activity than what any provider of that particular product or service normally provides. In re Landmark Commc'ns, Inc., 204 USPQ 692, 695 (TTAB 1979). The identification of goods/services, specimen of use, or other information in the application record may indicate whether the activity identified in the application is a separately registrable service. If necessary, the examining attorney should request additional information, pursuant to 37 C.F.R. §2.61(b), to determine if the activity constitutes a service as contemplated by the Trademark Act. See TMEP §814.
For example, operating a grocery store is clearly a service. Bagging groceries for customers is not considered a separately registrable service, because this activity is normally provided to and expected by grocery store customers, and is, therefore, merely ancillary to the primary service.
Providing general information or instructions as to the purpose and uses of applicant’s goods is merely incidental to the sale of goods, not a separate consulting service. See TMEP §1301.01(b)(v).
Conducting clinical trials for one’s own pharmaceuticals is generally considered to be a normally expected and routine activity that is not separately registrable from the principal activity of providing the goods themselves because the U.S. Food and Drug Administration legally requires clinical trials as a prerequisite of pharmaceutical approval. See TMEP §1301.01(b)(vi).
Conducting a contest to promote the sale of one’s own goods or services is usually not considered a service, because it is an ordinary and routine promotional activity. See TMEP §1301.01(b)(i).
While the repair of the goods of others is a recognized service, an applicant’s guarantee of repair of its own goods generally does not constitute a separate service, because that activity is ancillary to the principal activity of providing the goods and normally expected in the trade. See TMEP §1301.01(b)(ii).
However, the fact that an activity is ancillary to a principal service or to the sale of goods does not in itself mean that it is not a separately registrable service. The statute makes no distinction between primary, incidental, or ancillary services. In re Universal Press Syndicate, 229 USPQ 638 (TTAB 1986) (licensing cartoon character found to be a separate service that was not merely incidental or necessary to larger business of magazine and newspaper cartoon strip); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984) (chemical manufacturer’s feed, delivery, and storage of liquid chemical products held to constitute separate service, because applicant’s activities extend beyond routine sale of chemicals); In re Congoleum Corp., 222 USPQ 452 (TTAB 1984) (awarding prizes to retailers for purchasing applicant’s goods from distributors held to be sufficiently separate from the sale of goods to constitute a service rendered to distributors, because it confers a benefit on distributors that is not normally expected by distributors in the relevant industry); In re C.I.T. Fin. Corp., 201 USPQ 124 (TTAB 1978) (computerized financial data-processing services rendered to applicant’s loan customers held to be a registrable service, since it provides benefits that were not previously available, and is separate and distinct from the primary service of making consumer loans); In re U.S. Home Corp. of Tex., 199 USPQ 698 (TTAB 1978) (planning and laying out residential communities for others was found to be a service, because it goes above and beyond what the average individual would do in constructing and selling a home on a piece of land that he or she has purchased); In re John Breuner Co., 136 USPQ 94 (TTAB 1963) (credit services provided by a retail store constitute a separate service, since extension of credit is neither mandatory nor required in the operation of a retail establishment).
The fact that the activities are offered only to purchasers of the applicant’s primary product or service does not necessarily mean that the activity is not a service. In re Otis Eng’g Corp., 217 USPQ 278 (TTAB 1982) (quality control and quality assurance services held to constitute a registrable service even though the services were limited to applicant’s own equipment); In re John Breuner Co., 136 USPQ at 95 (credit services offered only to customers of applicant’s retail store found to be a service).
The fact that the services for which registration is sought are offered to a different class of purchasers than the purchasers of applicant’s primary product or service is also a factor to be considered. In re Forbes Inc., 31 USPQ2d 1315 (TTAB 1994) ; In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313 (TTAB 1990).
Another factor to be considered in determining whether an activity is a registrable service is the use of a mark different from the mark used on or in connection with the applicant’s principal product or service. See In re Mitsubishi Motor Sales of Am. Inc., 11 USPQ2d 1312, 1314-15 (TTAB 1989) ; In re Universal Press Syndicate, 229 USPQ at 640; In re Congoleum Corp., 222 USPQ at 453-54; In re C.I.T. Fin. Corp., 201 USPQ at 126. However, an activity that is normally expected or routinely done in connection with sale of a product or another service is not a registrable service even if it is identified by a different mark. In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987); In re Television Digest, Inc., 169 USPQ 505 (TTAB 1971) . Moreover, the mark identifying the ancillary service does not have to be different from the mark identifying the applicant’s goods or primary service. Ex parte Handmacher-Vogel, Inc., 98 USPQ 413 (Comm’r Pats. 1953).
It is well settled that the promotion of one’s own goods is not a service. In re Radio Corp. of Am., 205 F.2d 180, 98 USPQ 157 (C.C.P.A. 1953) (record manufacturer who prepares radio programs primarily designed to advertise and sell records is not rendering a service); In re SCM Corp., 209 USPQ 278 (TTAB 1980) (supplying merchandising aids and store displays to retailers does not constitute separate service); Ex parte Wembley, Inc., 111 USPQ 386 (Comm’r Pats. 1956) (national advertising program designed to sell manufacturer’s goods to ultimate purchasers is not service to wholesalers and retailers, because national product advertising is normally expected of manufacturers of nationally distributed products, and is done in furtherance of the sale of the advertised products).
However, an activity that goes above and beyond what is normally expected of a manufacturer in the relevant industry may be a registrable service, even if it also serves to promote the applicant’s primary product or service. In re U.S. Tobacco Co., 1 USPQ2d 1502 (TTAB 1986) (tobacco company’s participating in auto race held to constitute an entertainment service, because participating in an auto race is not an activity that a seller of tobacco normally does); In re Heavenly Creations, Inc., 168 USPQ 317 (TTAB 1971) (applicant’s free hairstyling instructional parties found to be a service separate from the applicant’s sale of wigs, because it goes beyond what a seller of wigs would normally do in promoting its goods); Ex parte Handmacher-Vogel, Inc., 98 USPQ 413 (Comm’r Pats. 1953) (clothing manufacturer’s conducting women’s golf tournaments held to be a service, because it is not an activity normally expected in promoting the sale of women’s clothing).
Conducting a contest to promote the sale of one’s own goods is usually not considered a service, even though benefits may accrue to the winners of the contest. Such a contest is usually ancillary to the sale of goods or services, and is nothing more than a device to advertise the applicant’s products or services. In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987); In re Loew’s Theatres, Inc., 179 USPQ 126 (TTAB 1973) ; In re Johnson Publ'g Co., 130 USPQ 185 (TTAB 1961) . However, a contest that serves to promote the sale of the applicant’s goods may be registrable if it operates in a way that confers a benefit unrelated to the sale of the goods, and the benefit is not one that is normally expected of a manufacturer in that field. In re Congoleum Corp., 222 USPQ 452 (TTAB 1984) .
A mark identifying a beauty contest is registrable either as a promotional service, rendered by the organizer of the contest to the businesses or groups that sponsor the contest, or as an entertainment service. In re Miss Am. Teen-Ager, Inc., 137 USPQ 82 (TTAB 1963) . See TMEP §1402.11.
See TMEP §1301.01(b)(iii) regarding the providing of advertising space in a periodical.
While the repair of the goods of others is a recognized service, an applicant’s guarantee of repair of its own goods does not normally constitute a separate service, because that activity is ancillary to and normally expected in the trade. In re Orion Research Inc., 669 F.2d 689, 205 USPQ 688 (C.C.P.A. 1980) (guarantee of repair or replacement of applicant’s goods that is not separately offered, promoted, or charged for is not a service); In re Lenox, Inc., 228 USPQ 966 (TTAB 1986) (lifetime warranty that is not separately offered, promoted, or charged for is not a service).
However, a warranty that is offered or charged for separately from the goods, or is sufficiently above and beyond what is normally expected in the industry, may constitute a service. In re Mitsubishi Motor Sales of Am., Inc., 11 USPQ2d 1312 (TTAB 1989) (comprehensive automobile vehicle preparation, sales, and service program held to be a service, where applicant’s package included features that were unique and would not normally be expected in the industry); In re Sun Valley Waterbeds Inc., 7 USPQ2d 1825 (TTAB 1988) (retailer’s extended warranty for goods manufactured by others held to be a service, where the warranty is considerably more extensive than that offered by others); In re Otis Eng'g Corp., 217 USPQ 278 (TTAB 1982) (non-mandatory quality control and quality assurance services held to constitute a registrable service even though the services were limited to applicant’s own equipment, where the services were separately charged for, the goods were offered for sale without services, and the services were not merely a time limited manufacturer’s guarantee).
Providing warranties to consumers and retailers on power-operated outdoor products was held to be a registrable service where the warranty covered goods manufactured by applicant but sold under the marks of third-party retailers. Noting that none of applicant’s trademarks appeared on the goods or identified applicant as the source of the goods, the Board found that the third-party retailers rather than applicant would be regarded as the manufacturer of the products. Because purchasers would make a distinction between the provider of the warranty and the provider of the goods, applicant’s warranty service would not be regarded as merely an inducement to purchase its own goods. The Board also noted that applicant’s activities constitute a service to the third-party retailers, because applicant’s provision of warranties avoids the need of the retailer itself to provide a warranty. In re Husqvarna Aktiebolag, 91 USPQ2d 1436 (TTAB 2009) .
When an applicant offers a warranty on its own goods or services, the identification of services must include the word "extended," or similar wording, to indicate that the warranty is "qualitatively different" from a warranty normally provided ancillary to the sale of the applicant’s goods/services. When an applicant offers a warranty on third-party goods, the identification of services must so indicate. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (affirming that the USPTO has the discretion to determine whether and how a trademark registration should include a more particularized identification of the goods for which a mark is used).
The identification of services must also specify the item(s) that the extended warranty covers, e.g., "providing extended warranties on television sets." Id.
Extended warranty services are classified in Class 36.
The publication of one’s own periodical is not a service, because it is done primarily for applicant’s own benefit and not for the benefit of others. In re Billfish Int’l Corp., 229 USPQ 152 (TTAB 1986) (activities of collecting, distributing, and soliciting information relating to billfishing tournaments for a periodical publication not a separate service, because these are necessary preliminary activities that a publisher must perform prior to publication and sale of publication); In re Alaska Nw. Publ'g Co., 212 USPQ 316 (TTAB 1981) (title of magazine section not registrable for magazine publishing services, because the activities and operations associated with designing, producing, and promoting applicant’s own product are ancillary activities that would be expected by purchasers and readers of any magazine); In re Landmark Commc'ns, Inc., 204 USPQ 692 (TTAB 1979) (title of newspaper section not registrable as service mark for educational or entertainment service, because collected articles, stories, reports, comics, advertising, and illustrations are indispensable components of newspapers without which newspapers would not be sold); In re Television Digest, Inc., 169 USPQ 505 (TTAB 1971) (calculating advertising rates for a trade publication not a registrable service, because this is an integral part of the production or operation of any publication).
However, providing advertising space in one’s own periodical may be a registrable service, if the advertising activities are sufficiently separate from the applicant’s publishing activities. In re Forbes Inc., 31 USPQ2d 1315 (TTAB 1994) ("providing advertising space in a periodical" held to be a registrable service, where the advertising services were rendered to a different segment of the public under a different mark than the mark used to identify applicant’s magazines); In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313 (TTAB 1990) (real estate advertising services rendered by soliciting advertisements and publishing a guide comprising the advertisements of others held to be a registrable service, where advertising was found to be the applicant’s primary activity, and the customers who received the publication were not the same as those to whom the advertising services were rendered).
Offering shares of one’s own stock for investment and reinvestment, and publication of reports to one’s own shareholders, are not services, because these are routine corporate activities that primarily benefit the applicant. In re Canadian Pac. Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985). Similarly, soliciting investors in applicant’s own partnership is not a registrable service. In re Integrated Res., Inc., 218 USPQ 829 (TTAB 1983) (syndicating investment partnerships did not constitute a service within the meaning of the Trademark Act, because there was no evidence that the applicant was in the business of syndicating the investment partnerships of others; rather, the applicant partnership was engaged only in syndication of interests in its own organization). On the other hand, investing the funds of others is a registrable service that primarily benefits others. In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985) (investment of funds of institutional investors and providing capital for management found to be a registrable service).
In Canadian Pacific, 224 USPQ at 974, the court noted that since shareholders are owners of the corporation, an applicant who offers a reinvestment plan to its stockholders is essentially offering the plan to itself and not to a segment of the buying public. The court distinguished American Int’l Reinsurance Co., v. Airco, Inc., 570 F.2d 941, 197 USPQ 69 (C.C.P.A. 1978), in which offering an optional retirement plan to applicant’s employees was found to be a registrable service that primarily benefits the employees.
Providing general information or instructions as to the purpose and uses of applicant’s goods is merely incidental to the sale of goods, not a separate informational service. In re Moore Bus. Forms Inc., 24 USPQ2d 1638 (TTAB 1992) (paper manufacturer who rates the recycled content and recyclability of its own products is merely providing information about its goods, not rendering a service to others); In re Reichhold Chems., Inc., 167 USPQ 376 (TTAB 1970) ("promoting the sale and use of chemicals" is not a registrable service, where applicant is merely providing "technical bulletins" that contain information about its own products); Ex parte Armco Steel Corp., 102 USPQ 124 (Comm’r Pats. 1954) (analyzing the needs of customers is not registrable as a consulting service, because it is an ordinary activity that is normally expected of a manufacturer selling goods); Ex parte Elwell-Parker Elec. Co., 93 USPQ 229 (Comm’r Pats. 1952) (providing incidental instructions on the efficient use of applicant’s goods not a service). However, an applicant’s free hairstyling instructional "parties" were found to be a service, because conducting parties goes beyond what a seller of wigs would normally do in promoting its goods. In re Heavenly Creations, Inc., 168 USPQ 317 (TTAB 1971).
Because conducting clinical trials necessary for governmental approval of one’s own pharmaceuticals generally is a normally expected, routine, and legally required activity in connection with the sale of pharmaceuticals, it is not a separate registrable service done primarily for the benefit of others. Cf. In re Dr Pepper Co., 836 F.2d 508, 509, 5 USPQ2d 1207, 1208 (Fed. Cir. 1987) ("[I]t has become a settled principle that the rendering of a service which is normally ‘expected or routine’ in connection with the sale of one's own goods is not a registrable service whether denominated by the same or a different name from the trademark for its product."); In re Landmark Commc’ns, Inc., 204 USPQ 692, 695 (TTAB 1979) (noting that "to be separately recognizable, as services, an applicant’s activity must be qualitatively different from anything necessarily done in connection with the sale of goods").
Pharmaceutical companies are legally required to conduct clinical trials before pharmaceutical preparations can be approved for human use. See U.S. Food & Drug Admin., Development & Approval Process | Drugs, https://www.fda.gov/drugs/development-approval-process-drugs (accessed Dec. 19, 2019); see also 21 C.F.R. §312.21 (explaining the three phases of clinical trials for a previously untested drug). An activity or process that is necessary or legally required for an applicant to be able to provide the main product or service is not separable from the main product or service. See In re Orion Research, Inc., 523 F.2d 1398, 1400, 187 USPQ 485, 486-87 (C.C.P.A. 1975) (holding a warranty to repair or replace one’s own merchandise to be a normally expected and legally required duty of a merchandiser and not a separate and registrable service); In re Television Digest, Inc., 169 USPQ 505, 508 (TTAB 1971) (noting that providing a schedule of advertising rates is necessary for publishing a directory or magazine and is not a separate service). Therefore, since conducting a clinical trial is a legally required prerequisite to pharmaceutical sales, when this service is conducted by a pharmaceutical company for its own goods, it is an expected and mandated activity not separately registrable from the principal activity of providing the pharmaceutical preparations themselves.
Accordingly, when registration is sought for a mark used in connection with the conducting of pharmaceutical clinical trials, the examining attorney must ascertain whether the services are provided for the pharmaceuticals of others. If the record is unclear, the examining attorney should request additional information, pursuant to 37 C.F.R. §2.61(b), to clarify whether the pharmaceutical clinical trials are registrable services as contemplated by the Trademark Act. See TMEP §814.
Not every word, combination of words, or other designation used in the performance or advertising of services performs a service mark function. See In re The Ride, LLC, 2020 USPQ2d 39644, at *6 (TTAB 2020) (quoting Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973)) (citing Roux Labs., Inc. v. Clairol, Inc., 427 F.2d 823, 828, 166 USPQ 34, 39 (C.C.P.A. 1970)). To function as a service mark, the asserted mark must be used in a way that identifies and distinguishes the source of the services recited in the application. Even if it is clear that the applicant is rendering a service (see TMEP §§1301.01–1301.01(b)(vi)), the record must show that the asserted mark actually identifies and distinguishes the source of the service recited in the application. In re Adver. & Mktg. Dev. Inc., 821 F.2d 614, 621, 2 USPQ2d 2010, 2015 (Fed. Cir. 1987) (stationery specimen showed use of THE NOW GENERATION as a mark for applicant's advertising or promotional services as well as to identify a licensed advertising campaign, where the recited services were specified in a byline appearing immediately beneath the mark).
The fact that the proposed mark appears in an advertisement or brochure in which the services are advertised does not in itself show use as a mark. The specimen must show a direct association between the mark and the services identified in the application. See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973) (term that identifies only a process did not show direct association with services, even where services were advertised in the same specimen brochure in which the name of the process was used; "[t]he minimum requirement [was] some direct association between the offer of services and the mark sought to be registered"); In re Graystone Consulting Assocs., 115 USPQ2d 2035 (TTAB 2015) (specimen did not show a direct association between the mark WALK-IN SHOPPER and the identified business training consultancy services, but instead showed the mark being used to identify a particular type of customer that was the focus of the consulting services); In re Duratech Indus. Inc., 13 USPQ2d 2052 (TTAB 1989) (term used on bumper sticker with no reference to the services did not function as a mark); Peopleware Sys., Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB 1985) (term PEOPLEWARE used within a byline on calling card specimen did not constitute service mark usage of that term, even if specimen elsewhere showed that applicant provided the recited services); In re J.F. Pritchard & Co., 201 USPQ 951 (TTAB 1979) (proposed mark was used only to identify a liquefaction process in brochure advertising the services and did not function as a mark because there was no direct association between the mark and the offering of services); TMEP §1301.04(b).
The question of whether a designation functions as a mark that identifies and distinguishes the recited services is determined by examining the specimen(s) and any other evidence in the record that shows how the designation is used. In re Vox Populi Registry Ltd., 25 F.4th 1348, 1351, 2022 USPQ2d 115, at *2-3 (Fed. Cir. 2022) ("The [Trademark Trial and Appeal] Board looks to ‘the [Applicant's] specimens and other evidence of record showing how the designation is actually used in the marketplace’" (quoting In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); In re Morganroth, 208 USPQ 284 (TTAB 1980) ; In re Republic of Austria Spanische Reitschule, 197 USPQ 494 (TTAB 1977) ; see In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017). It is the perception of the relevant public that determines whether the asserted mark functions as a service mark, not the applicant’s intent, hope, or expectation that it do so. See In re Vox Populi Registry, 25 F.4th at 1351, 2022 USPQ2d 115, at *2 ("In analyzing whether a proposed mark functions as a source identifier, the Board focuses on consumer perception.") (citing In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *3 (TTAB 2020)); In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960); In re The Ride, LLC, 2020 USPQ2d 39644, at *6 ("The critical inquiry in determining whether a designation functions as a mark is how the designation would be perceived by the relevant public.") (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229). Factors that the examining attorney should consider in determining whether the asserted mark functions as a service mark include whether the wording claimed as a mark is physically separate from textual matter, whether such wording is displayed in capital letters or enclosed in quotation marks, and the manner in which such wording is used in relation to other material on the specimen.
While a service mark does not have to be displayed in any particular size or degree of prominence, it must be used in a way that makes a commercial impression separate and apart from the other elements of the advertising matter or other material upon which it is used, such that the designation will be recognized by prospective purchasers as a source identifier. In re C.R. Anthony Co., 3 USPQ2d 1894 (TTAB 1987); In re Post Props., Inc., 227 USPQ 334 (TTAB 1985) . The proposed mark must not blend so well with other matter on the specimen that it is difficult or impossible to discern what the mark is. In re McDonald's Corp., 229 USPQ 555 (TTAB 1985) ; In re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982); In re Republic of Austria Spanische Reitschule, 197 USPQ at 494; Ex parte Nat’l Geographic Soc'y, 83 USPQ 260 (Comm’r Pats. 1949). On the other hand, the fact that the proposed mark is prominently displayed does not in and of itself make it registrable, if it is not used in a manner that would be perceived by consumers as an indicator of source. In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984). The important question is not how readily a mark will be noticed but whether, when noticed, it will be understood as identifying and indicating the origin of the services. In re Singer Mfg. Co., 255 F.2d 939, 118 USPQ 310 (C.C.P.A. 1958).
The presence of the "TM" or "SM" on the specimen cannot transform an unregistrable designation into a registrable mark. Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *32-33 (TTAB 2021) (citing In re Eagle Crest, Inc., 96 USPQ2d at 1231); In re Brit. Caledonian Airways Ltd., 218 USPQ 737, 739 (TTAB 1983); TMEP §1202.
See TMEP §1301.02(a) for further information about matter that does not function as a service mark, §§1301.01–1301.01(b)(vi) regarding what constitutes a service, and §§1301.04–1301.04(j) regarding service mark specimens.
To function as a service mark, a designation must be used in a manner that would be perceived by purchasers as identifying and distinguishing the source of the services recited in the application. See In re Keep A Breast Found., 123 USPQ2d 1869, 1882 (TTAB 2017) (finding that three-dimensional cast of female breast and torso would be perceived as something that applicant assists in making as part of applicant’s associational and educational services, rather than as a mark designating the source of the services).
Use of a designation or slogan to merely convey advertising or promotional information, rather than to identify and indicate the source of the services, is not service mark use. See, e.g., In re Standard Oil Co., 275 F.2d 945, 946-47, 125 USPQ 227, 228-29 (C.C.P.A. 1960) (GUARANTEED STARTING found to merely convey information about applicant’s services of "winterizing" motor vehicles); In re TracFone Wireless, Inc., 2019 USPQ2d 222983, at *3 (TTAB 2019) (UNLIMITED CARRYOVER held to be merely informational and not source identifying for telecommunication services because it merely informs consumers that they can carry over unlimited data from one billing cycle to the next); In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1159 (TTAB 2019) (INVESTING IN AMERICAN JOBS held to be merely informational and not source identifying for various retail, convenience, and grocery store services because it merely informs consumers that applicant promotes American-made goods by investing in American jobs); In re Melville Corp., 228 USPQ 970 (TTAB 1986) (BRAND NAMES FOR LESS found to be informational phrase that does not function as a mark for retail store services); In re Brock Residence Inns, Inc., 222 USPQ 920 (TTAB 1984) (FOR A DAY, A WEEK, A MONTH OR MORE so highly descriptive and informational in nature that purchasers would be unlikely to perceive it as an indicator of the source of hotel services); In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984) (WHY PAY MORE found to be a common commercial phrase that does not serve to identify grocery store services); In re European-American Bank & Trust Co., 201 USPQ 788 (TTAB 1979) (slogan THINK ABOUT IT found to be an informational or instructional phrase that would not be perceived as a mark for banking services). See TMEP §1202.04 regarding informational matter that does not function as a mark.
A term used only to identify a product, device, or instrument sold or used in the performance of a service rather than to identify the service itself does not function as a service mark. See In re Moody’s Investors Serv. Inc., 13 USPQ2d 2043 (TTAB 1989) ("Aaa," as used on the specimen, found to identify the applicant’s ratings instead of its rating services); In re Niagara Frontier Servs., Inc., 221 USPQ 284 (TTAB 1983) (WE MAKE IT, YOU BAKE IT only identifies pizza, and does not function as a service mark to identify grocery store services); In re Brit.ish Caledonian Airways Ltd., 218 USPQ 737 (TTAB 1983) (term that identifies a seat in the first-class section of an airplane does not function as mark for air transportation services); In re Editel Prods., Inc., 189 USPQ 111 (TTAB 1975) (MINI-MOBILE identifies only a vehicle used in rendering services and does not serve to identify the production of television videotapes for others); In re Oscar Mayer & Co., 171 USPQ 571 (TTAB 1971) (WIENERMOBILE does not function as mark for advertising and promoting the sale of wieners, where it is used only to identify a vehicle used in rendering claimed services). Cf. In re Griffin Pollution Control Corp., 517 F.2d 1356 (C.C.P.A. 1975) (OXINITE does not serve as a trademark for mixture of gasses produced by waste treatment process because applicant did not sell the gasses separately but only the waste treatment process).
Similarly, a term that only identifies a process, style, method, or system used in rendering the services is not registrable as a service mark, unless it is also used to identify and distinguish the service. See TMEP §1301.02(e) regarding terms used only to refer to a process, style, method, or system.
A term that only identifies a menu item does not function as a mark for restaurant services. In re El Torito Rest. Inc., 9 USPQ2d 2002 (TTAB 1988) .
The name or design of a character or person does not function as a service mark, unless it identifies and distinguishes the services in addition to identifying the character or person. See TMEP §1301.02(b) regarding names of characters or personal names as service marks.
A term used only as a trade name is not registrable as a service mark. See In re Signal Cos., 228 USPQ 956 (TTAB 1986) (journal advertisement submitted as specimen showed use of ONE OF THE SIGNAL COMPANIES merely as an informational slogan, where words appeared only in small, subdued typeface underneath the address and telephone number of applicant’s subsidiary). See TMEP §1202.01 regarding matter used solely as a trade name.
If a service mark would be perceived only as decoration or ornamentation when used in connection with the identified services, it must be refused as nondistinctive trade dress under. Matter that is merely ornamental in nature does not function as a service mark. See In re Tad’s Wholesale, Inc., 132 USPQ 648 (TTAB 1962) (wallpaper design not registrable as a service mark for restaurant services). See TMEP §§1202.02(b)–1202.02(b)(ii) regarding product design and product packaging trade dress and §1301.02(c) regarding three-dimensional service marks.
See TMEP §1202.02(a)(vii) regarding trade dress functionality and service marks, §1215.02(d) regarding refusing marks comprised solely of gTLDs for a domain registry operator and domain name registrar services for a failure to function, and §1301.04(g)(ii) regarding refusing marks that do not function as service marks.
Under 15 U.S.C. §1127, a name or design of a character does not function as a service mark, unless it identifies and distinguishes services in addition to identifying the character. If the name or design is used only to identify the character, it is not registrable as a service mark. In re Hechinger Inv. Co. of Del., 24 USPQ2d 1053 (TTAB 1991) (design of dog appearing in advertisement does not function as mark for retail hardware and housewares services); In re McDonald’s Corp., 229 USPQ 555 (TTAB 1985) (APPLE PIE TREE does not function as mark for restaurant services, where the specimen shows use of mark only to identify one character in a procession of characters); In re Whataburger Sys., Inc., 209 USPQ 429 (TTAB 1980) (design of zoo animal character distributed to restaurant customers in the form of an iron-on patch not used in a manner that would be perceived as an indicator of source); In re Burger King Corp., 183 USPQ 698 (TTAB 1974) (fanciful design of king does not serve to identify and distinguish restaurant services). See TMEP §1202.10 regarding the registrability of the names and designs of characters in creative works.
Similarly, personal names (actual names and pseudonyms) of individuals or groups function as marks only if they identify and distinguish the services recited and not merely the individual or group. In re Mancino, 219 USPQ 1047 (TTAB 1983) (holding that BOOM BOOM would be viewed by the public solely as applicant’s professional boxing nickname and not as an identifier of the service of conducting professional boxing exhibitions); In re Lee Trevino Enters., 182 USPQ 253 (TTAB 1974) (LEE TREVINO used merely to identify a famous professional golfer rather than as a mark to identify and distinguish any services rendered by him); In re Generation Gap Prods., Inc., 170 USPQ 423 (TTAB 1971) (GORDON ROSE used only to identify a particular individual and not as a service mark to identify the services of a singing group).
The name of a character or person is registrable as a service mark if the record shows that it is used in a manner that would be perceived by purchasers as identifying the services in addition to the character or person. In re Fla. Cypress Gardens Inc., 208 USPQ 288 (TTAB 1980) (name CORKY THE CLOWN used on handbills found to function as a mark to identify live performances by a clown, where the mark was used to identify not just the character but also the act or entertainment service performed by the character); In re Carson, 197 USPQ 554 (TTAB 1977) (individual’s name held to function as mark, where specimen showed use of the name in conjunction with a reference to services and information as to the location and times of performances, costs of tickets, and places where tickets could be purchased); In re Ames, 160 USPQ 214 (TTAB 1968) (name of musical group functions as mark, where name was used on advertisements that prominently featured a photograph of the group and gave the name, address, and telephone number of the group’s booking agent); In re Folk, 160 USPQ 213 (TTAB 1968) (THE LOLLIPOP PRINCESS functions as a service mark for entertainment services, namely, telling children’s stories by radio broadcasting and personal appearances).
See TMEP §§1202.09(a)–1202.09(a)(iii) regarding names and pseudonyms of authors and performing artists, §1202.09(b) regarding names of artists used on original works of art, and §1202.10 regarding names and designs of characters.
The three-dimensional configuration of a building is registrable as a service mark only if it is used in such a way that it is or could be perceived as a mark. Evidence of use might include menus or letterhead that show promotion of the building’s design, or configuration, as a mark. See In re Lean-To Barbecue, Inc., 172 USPQ 151 (TTAB 1971); In re Master Kleens of Am., Inc., 171 USPQ 438 (TTAB 1971) ; In re Griffs of Am., Inc., 157 USPQ 592 (TTAB 1968) ; cf. Fotomat Corp. v. Cochran, 437 F. Supp. 1231, 194 USPQ 128 (D. Kan. 1977) ; Fotomat Corp. v. Photo Drive-Thru, Inc., 425 F. Supp. 693, 193 USPQ 342 (D.N.J. 1977) .
A three-dimensional costume design may function as a mark for entertainment services. See In re Red Robin Enters., 222 USPQ 911 (TTAB 1984) .
However, the Board has held that a mark consisting of a three-dimensional cylindrical cast of female breasts and torso did not function as a mark for applicant’s association, charitable fundraising, and educational services in the field of breast cancer. In re Keep A Breast Found., 123 USPQ2d 1869, 1880 (TTAB 2017). The evidence indicated that the mark was being used as part of applicant’s services to assist women to make such casts. Thus, the cast would be perceived as part of the services, rather than as a mark designating the source of the services. Id. Further, the Board has held that a motion mark consisting of the live visual and motion elements of a guided bus tour in which an entertainer stops in view of the bus to perform a tap dance routine at a predetermined location did not function as a mark, because the evidence showed that the tap dance would be perceived as part of the bus tour services rather than a mark designating the source of the services. In re The Ride, LLC, 2020 USPQ2d 39644, at *10 (TTAB 2020).
Generally, a photograph is a proper specimen of use for a three-dimensional mark. However, photographs of a building are not sufficient to show use of the building design as a mark for services performed in the building if they only show the building in which the services are performed. The specimen must show that the proposed mark is used in a way that would be perceived as a mark.
See 37 C.F.R. §2.52(b)(2) and TMEP §807.10 regarding drawings of three-dimensional marks.
When examining a three-dimensional mark, the examining attorney must determine whether the proposed mark is inherently distinctive. See TMEP §1202.02(b)(ii).
The title of a continuing series of presentations (e.g., a television or movie "series," a series of live performances, or a continuing radio program), may constitute a mark for either entertainment services or educational services. However, the title of a single creative work, that is, the title of one episode or event presented as one program, does not function as a service mark. In re Posthuma, 45 USPQ2d 2011 (TTAB 1998) (term that identifies title of a play not registrable as service mark for entertainment services). The record must show that the matter sought to be registered is more than the title of one presentation, performance, or recording. See TMEP §§1202.08–1202.08(f) and cases cited therein for further information regarding the registrability of the title of a single creative work.
Specimens that show use of a service mark in relation to television programs or a movie series may be in the nature of a photograph of the video or film frame when the mark is used in the program.
Service marks in the nature of titles of entertainment programs may be owned by the producer of the show, by the broadcasting system or station, or by the author or creator of the show, depending upon the circumstances. Normally, an applicant’s statement that the applicant owns the mark is sufficient; the examining attorney should not inquire about ownership, unless information in the record clearly contradicts the applicant’s verified statement that it is the owner of the mark.
A term that only identifies a process, style, method, system, or the like is not registrable as a service mark. A system or process is only a way of doing something, not a service. The name of a system or process does not become a service mark, unless it is also used to identify and distinguish the service. In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) (term not registrable as service mark where the specimen shows use of the term only as the name of a process, even though applicant is in the business of rendering services generally and the services are advertised in the same specimen brochure in which the name of the process is used); In re HSB Solomon Assoc., 102 USPQ2d 1269, 1274 (TTAB 2012) (finding that the specimens show CEI identifying only a process and do not show a direct association between CEI and the applied-for services); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984) (term does not function as service mark where it only identifies a photochemical process used in rendering service); In re Vsesoyuzny Ordena Trudovogo Krasnogo Znameni Nauchoissledovatelsky Gorno-Metallurgichesky Institut Tsvetnykh Mettalov "Vnitsvetmet", 219 USPQ 69 (TTAB 1983) (KIVCET identifies only a process and plant configuration, not engineering services); In re Scientific Methods, Inc., 201 USPQ 917 (TTAB 1979) (term that merely identifies educational technique does not function as mark to identify educational services); In re J.F. Pritchard & Co., 201 USPQ 951 (TTAB 1979) (term used only to identify liquefaction process does not function as mark to identify design and engineering services); In re Produits Chimiques Ugine Kuhlmann Societe Anonyme, 190 USPQ 305 (TTAB 1976) (term that merely identifies a process used in rendering the service does not function as service mark); In re Lurgi Gesellschaft Fur Mineraloltechnik m.b.H., 175 USPQ 736 (TTAB 1972) (term that merely identifies process for recovery of high-purity aromatics from hydrocarbon mixtures does not function as service mark for consulting, designing, and construction services); Ex parte Phillips Petroleum Co., 100 USPQ 25 (Comm’r Pats. 1953) (although used in advertising of applicant’s engineering services, CYCLOVERSION was only used in the advertisements to identify a catalytic treating and conversion process).
If the term is used to identify both the system or process and the services rendered by means of the system or process, the designation may be registrable as a service mark. See Liqwacon Corp. v. Browning-Ferris Indus., Inc., 203 USPQ 305 (TTAB 1979), in which the Board found that the mark LIQWACON identified both a waste treatment and disposal service and a chemical solidification process.
The name of a system or process is registrable only if: (1) the applicant is performing a service (see TMEP §§1301.01–1301.01(b)(vi)); and (2) the designation identifies and indicates the source of the service. In determining eligibility for registration, the examining attorney must carefully review the specimen, together with any other information in the record, to see how the applicant uses the proposed mark. The mere advertising of the recited services in a brochure that refers to the process does not establish that a designation functions as a service mark; there must be some association between the offer of services and the matter sought to be registered. In re Universal Oil Prods. Co., supra; In re J.F. Pritchard & Co., supra.
A term that only identifies a computer program does not become a service mark for a separate service activity, unless it is also used to identify and distinguish the service. In re Walker Research, Inc., 228 USPQ 691 (TTAB 1986) (term that merely identifies computer program used in rendering services does not function as a mark to identify market analysis services); In re Info. Builders Inc., 213 USPQ 593 (TTAB 1982) (term identifies only a computer program, not the service of installing and providing access to a computer program); In re DSM Pharms., Inc., 87 USPQ2d 1623 (TTAB 2008) (term that merely identifies computer software used in rendering services does not function as a mark to identify custom manufacturing of pharmaceuticals). If the applicant’s services are provided through software, it is possible for a mark to serve as a source indicator for the services provided and not just for the software itself. See In re JobDiva Inc., 843 F.3d 936, 941, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) ("Even though a service may be performed by a company’s software, the company may well be rendering a service."). Therefore the examining attorney must review all the information of record to determine how the mark is used and how it is likely to be perceived by potential consumers. See In re JobDiva, 843 F.3d at 941, 121 USPQ2d at 1126 ("To determine whether a mark is used in connection with the services . . . a key consideration is the perception of the user."); In re Ancor Holdings, 79 USPQ2d 1218, 1221 (TTAB 2006).
The Trademark Trial and Appeal Board has noted that:
[I]n today’s commercial context if a customer goes to a company’s website and accesses the company’s software to conduct some type of business, the company may be rendering a service, even though the service utilizes software. Because of the ... blurring between services and products that has occurred with the development and growth of web-based products and services, it is important to review all the information in the record to understand both how the mark is used and how it will be perceived by potential customers.
In re Ancor Holdings, 79 USPQ2d at 1221 (INFOMINDER found to identify reminder and scheduling services provided via the Internet, and not just software used in rendering the services); see also In re JobDiva,121 USPQ2d at 1126 843 F.3d at 941, (noting that the question of whether consumers would associate registrant’s mark with the identified services, when each step of the services is performed by software, is a factual determination involving case-specific factors).
In examining an application under 15 U.S.C. §1051(a), an amendment to allege use under 15 U.S.C. §1051(c), or a statement of use under 15 U.S.C. §1051(d), the examining attorney ordinarily must refuse registration if the record shows that the services advertised have not been rendered. For example, the use of a mark in the announcement of a future service, including an advance reservation for or advance purchase of the service, does not constitute use as a service mark. Aycock Eng'g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301 (Fed. Cir. 2009) (holding that actual use of the mark in commerce in connection with an existing service is required and that mere preparations to use a mark sometime in the future does not constitute use in commerce); CBC Mortg. Agency v. TMRR, LLC, 2022 USPQ2d 748, at *24 n.15 (TTAB 2022) (finding registration of domain names comprising the mark did not constitute use of the mark in commerce); In re Port Auth. of N. Y., 3 USPQ2d 1453 (TTAB 1987) (finding advertising and promoting telecommunications services before the services were available insufficient to support registration); In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983) (holding that advertising of a marine entertainment park, which was not yet open, was not a valid basis for registration); In re Nationwide Mutual Ins. Co., 124 USPQ 465 (TTAB 1960) (holding that stickers placed on policies, bills, and letters announcing prospective name change is mere adoption, not service mark use).
Sometimes a service-mark specimen may show the wording "beta" being used in connection with the relevant services. This term is commonly used to describe a preliminary version of a product or service. Although some beta services may not be made available to consumers, others are. For example, a beta version of online non-downloadable software may be made available to the public for use even though the final version has not been released. Thus, the appearance of this term on a service-mark specimen does not, by itself, necessarily mean that the relevant services are not in actual use in commerce or that the specimen is unacceptable. However, if examination of the specimen indicates that the beta version is not in actual use in commerce, the examining attorney must refuse registration because applicant has not provided evidence of use of the applied-for mark in commerce. The statutory basis for refusal is 15 U.S.C. §§1051 and 1127. See TMEP §904.03(e) and §904.03(i)(D) regarding trademark specimens containing the term "beta."
See TMEP §806.03(c) regarding amendment of the basis to intent-to-use under 15 U.S.C. §1051(b) when a §1(a) basis fails; §1104.11 regarding withdrawal of an amendment to allege use, and §§1109.16-1109.16(e) regarding the time limits for correcting deficiencies in a statement of use.
In an application under §1(a) or §1(b) of the Trademark Act, 15 U.S.C. §1051(a) or §1051(b), the applicant must use the mark in the rendering of the services in commerce before a registration may be granted. Couture v. Playdom, Inc., 778 F.3d 1379, 1380-82, 113 USPQ2d 2042, 2043-44 (Fed. Cir. 2015) (holding that appellant’s use of the mark on a webpage, which included the notice "website under construction," was not sufficient to show use in commerce where evidence showed appellant advertised his readiness to render the services but did not actually provide them on or before the use-based application filing date); In re Suuberg, 2021 USPQ2d 1209, *5-8 (TTAB 2021) (holding that applicant’s preparatory measures to commence use of her mark for charitable services, such as incorporating and applying for tax-exempt status, registering her domain name, and building her website were not sufficient to show applicant actually used the mark in commerce to provide services on or before the use-based application filing date).
Section 45, 15 U.S.C. §1127, defines "commerce" as "all commerce which may lawfully be regulated by Congress." See TMEP §§901.01, 901.03.
The following are three examples of how a service may be rendered in commerce: (1) the applicant’s services are rendered across state lines; (2) customers come across state lines in response to advertising for the services; and (3) the applicant’s licensees or franchisees who use the mark are located in more than one state. See TMEP §901.03 and cases cited therein.
(a) An application under section 1(a) of the Act, an amendment to allege use under §2.76, a statement of use under §2.88, an affidavit or declaration of continued use or excusable nonuse under §2.160, or an affidavit or declaration of use or excusable nonuse under §7.36 must include one specimen per class showing the mark as actually used in commerce on or in connection with the goods or services identified. When requested by the Office as reasonably necessary to proper examination, additional specimens must be provided.
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(b)(2). A service mark specimen must show the mark as used in the sale of the services, including use in the performance or rendering of the services, or in the advertising of the services. The specimen must show a direct association between the mark and the services.
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(c) A clear and legible photocopy, photograph, web page printout, or other similar type of reproduction of an actual specimen that meets the requirements of paragraphs (a) and (b) of this section is acceptable. The reproduction must show the entire specimen or enough of the specimen that the nature of the specimen, the mark, and the good or service with which the mark is used are identifiable. A web page must include the URL and access or print date. An artist's rendering, a printer's proof, a computer illustration, digital image, or similar mockup of how the mark may be displayed, or a photocopy of the drawing required by §2.51, are not proper specimens.
(d) The specimen must be submitted through TEAS in a file format designated as acceptable by the Office unless:
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(2) Submission on paper is permitted under § 2.23(c) or is accepted on petition pursuant to § 2.147.
A service mark specimen must show the mark as actually used in the sale of the services, which includes use in the performance or rendering of the services, or in the advertising of the services recited in the application. 37 C.F.R. §2.56(b)(2). "[B]ecause by its very nature a service mark can be used in a wide variety of ways, the types of specimens which may be submitted as evidence of use are varied." In re Metriplex, Inc., 23 USPQ2d 1315, 1316 (TTAB 1992) . Whatever type of specimen is submitted, it must show proper use in commerce of the mark, which may be established by (1) showing the mark used or displayed as a service mark in the sale of the services, which includes use in the course of rendering or performing the services, or (2) showing the mark used or displayed in advertising the services, which encompasses marketing and promotional materials. See 37 C.F.R. §2.56(b)(2); On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1088, 56 USPQ2d 1471, 1476-77 (Fed. Cir. 2000) (indicating that an online menu item bearing the mark ONLINE TODAY was proper service mark use in connection with "providing access to online computer services offering computer-industry news, commentary and product reviews" because, inter alia, the "menu items are the mechanisms by which users obtained access to a particular online service"); In re Metriplex, Inc., 23 USPQ2d at 1316 (indicating that a specimen that does not explicitly refer to the services may be acceptable if it "show[s] use of the mark in the rendering, i.e., sale, of the services"); In re Red Robin Enters., 222 USPQ 911, 914 (TTAB 1984) (stating that "rendition" of services is properly viewed as an element of the "sale" of services).
The type of specimen submitted will often be apparent without the need for additional information regarding how the mark is used on the specimen. However, a specimen description submitted by the applicant typically helps clarify the manner in which the mark is used in commerce, and the more explanation the applicant provides initially, the more helpful it is to the examining attorney’s analysis. Thus, applicants are encouraged to provide a specimen description and explain how the applicant renders or provides the services and, if relevant, how marks are commonly used in the particular industry for such services. For instance, a description stating that a specimen comprises a title screen bearing the mark and showing the mark used in rendering the identified services is helpful for determining the nature and acceptability of the specimen.
If it is not readily apparent that the specimen shows the mark as used in the sale or advertising of the services, and any specimen description does not provide adequate clarification, the specimen must be refused for failure to show use of the mark in commerce. See TMEP §1301.04(g) regarding the grounds for refusal. If further clarification regarding the nature of the specimen or the manner in which the mark is used may easily overcome the refusal (e.g., an explanation that the specimen is a title screen displaying the mark at the start of the provision of the identified services), an advisory to that effect may be included with the refusal. Under Trademark Rule 2.61(b), 37 C.F.R. §2.61(b), an examining attorney may also require the applicant to submit additional information about the specimen or the mark’s manner of use.
Regardless of whether the specimen shows the mark used in the sale or advertising of the services, the examining attorney should consider the following when determining whether a service-mark specimen is acceptable.
The specimen must show the mark as actually used by the applicant in the sale or advertising of the services. 37 C.F.R. §2.56(b)(2). Acceptable specimens include newspaper and magazine advertisements, brochures, billboards, handbills, direct-mail leaflets, menus (for restaurants), press releases that are publicly available (e.g., on the applicant’s website), and the like. Business documents such as letterhead and invoices may be acceptable service-mark specimens if they show the mark and a direct association between the mark and the relevant services. Id.
A clear and legible photocopy, photograph, web page printout, or other similar type of reproduction of an otherwise acceptable specimen is sufficient. See 37 C.F.R. §2.56(c). The reproduction must show the entire specimen or enough of the specimen that the nature of the specimen, the mark, and the service with which the mark is used are identifiable. Id. A web page submitted as a web page specimen must include the URL and access or print date. Id. See TMEP §1301.04(h)(iv)(C) regarding web page specimens for services. However, artist renderings, printer’s proofs, computer illustrations, digitally created images, or similar mock-ups of how the mark may be used, press releases sent exclusively to news media, or printed articles resulting from such releases are not acceptable because they do not demonstrate the required use of the mark by the applicant. See id.; TMEP §1301.04(f). See TMEP §904.04(a) regarding digitally created or altered or mockup specimens. In some instances, a specimen or the specimen description may indicate that a 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."
A service-mark specimen must show the mark used or displayed in connection with a registrable service offered for the benefit of others. For information regarding activities that constitute registrable services, see TMEP §§1301.01–1301.01(b)(vi).
The same specimen may be acceptable for multiple classes if the specimen shows direct association between the mark and at least one of the identified services in each class. See 37 C.F.R. §2.56(b)(2); TMEP §1301.04(f)(ii). If the applicant intends for a submitted specimen to support multiple classes, the applicant should include a statement to that effect and indicate the classes supported by the specimen, but the applicant need not submit multiple copies of the same specimen. See TMEP §904.01(b).
The specimen must demonstrate the mark serving as a source indicator for the identified services. Therefore, registration must be refused if the specimen shows the mark is used only to promote goods rather than the identified services, or the mark is used as a service mark but not for the identified services (i.e., the applicant misidentified the services). See TMEP §§1301.02(a), 1301.02(e)–1301.02(f). See TMEP §1301.04(g)(i) regarding failure to show use in commerce and §1301.04(h)(iii) regarding misidentified services.
The proposed mark must actually function as a source-indicating service mark for the services identified in the application to be registrable. Thus, registration must be refused if, for example, the specimen shows the mark serves solely as a trade name (see TMEP §1202.01), only as the name of a downloadable or recorded computer software program or application (see TMEP §1301.02(f)), exclusively as the name of a method, process, or system (see TMEP §1301.02(e)), or merely as informational matter (see TMEP §§1202.04, 1301.02(a)).
The presence of the "TM" or "SM" symbol on the specimen cannot transform an unregistrable designation into a registrable mark. Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *32-33 (TTAB 2021) (citing In re Eagle Crest, Inc., 96 USPQ2d 1227, 1231 (TTAB 2010)); In re British Caledonian Airways Ltd., 218 USPQ 737, 739 (TTAB 1983); TMEP §1202.04.
See 37 C.F.R. §2.59 and TMEP §904.05 and §904.07–904.07(b)(i) regarding substitute specimens.
To be acceptable, a service-mark specimen must show the mark sought to be registered used in a manner that demonstrates a direct association between the mark and the services. 37 C.F.R. §2.56(b)(2). Specimens need not explicitly refer to the services to establish the requisite direct association between the mark and the services, but "there must be something which creates in the mind of the purchaser an association between the mark and the service activity." In re Cardio Grp., LLC, 2019 USPQ2d 227232, at *1 (TTAB 2019) (quoting In re Way Media, 118 USPQ2d 1697, 1698 (TTAB 2016)); see In re JobDiva, Inc.,843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir.2016) (quoting In re Ancor Holdings, LLC, 79 USPQ2d 1218, 1220 (TTAB 2006) ) ("[T]he question is whether the evidence of JobDiva's use of its marks ‘sufficiently creates in the minds of purchasers an association between the mark[s] and [JobDiva's personnel placement and recruitment] services.’").
The acceptability of a specimen is determined based on the facts and evidence of record, and viewed in the context of the relevant commercial environment. See In re Ancor Holdings, LLC, 79 USPQ2d at 1220 ("[W]e must base our determination of public perception of applicant's mark on the manner of use of [the mark] in the advertising which has been submitted as a specimen. Further, we must make that determination within the current commercial context, and, in doing so, we may consider any other evidence of record ‘bearing on the question of what impact applicant's use is likely to have on purchasers and potential purchasers.’" (quoting In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992)). Thus, the information provided by the specimen itself, any explanations offered by the applicant clarifying the nature, content, or context of use of the specimen, and any other information in the record should be considered in the analysis. In re Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (citing In re Pitney Bowes, Inc., 125 USPQ2d 1417, 1420 (TTAB 2018); In re DSM Pharms., Inc., 87 USPQ2d 1623, 1626 (TTAB 2008) ("In determining whether a specimen is acceptable evidence of service mark use, we may consider applicant's explanations as to how the specimen is used, along with any other available evidence in the record that shows how the mark is actually used.").
When the identified services involve newer technology, the examining attorney must follow the appropriate examination policies and procedures, but also should employ a practical approach in analyzing the submitted specimen. See In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286 (TTAB 2000) (finding a business card and stationery displaying the mark and the word "design" were acceptable specimens of use for applicant’s mark in connection with commercial art design services, noting that "[i]t is not necessary that the specific field of design, i.e., commercial art, also appear thereon" and that "the word ‘design’ alone is sufficient to create in the minds of purchasers an association between the mark and applicant's commercial art services"); In re Metriplex, Inc., 23 USPQ2d 1315, 1316 (TTAB 1992) (finding the submitted specimens acceptable to show use of applicant’s mark in connection with data transmission services because the specimens showed "the mark as it appears on a computer terminal in the course of applicant's rendering of the service" and noting that "purchasers and users of the service would recognize [applicant’s mark], as it appears on the computer screen specimens, as a mark identifying the data transmission services which are accessed via the computer terminal"). This may entail reviewing all the information of record to understand both how the mark is used and how it will be perceived by consumers. See In re JobDiva, 121 USPQ2d at 1126; In re Ancor Holdings, LLC, 79 USPQ2d at 1221. Additionally, if the examining attorney elects to conduct research regarding the mark, the services, or practices in the particular industry, it may be helpful to consider any information uncovered regarding how the applicant and others in the industry typically advertise and render the identified services in the relevant marketplace, as well as the manner in which service marks are normally used in connection with those services. See TMEP §1301.04(h)(iii) for a discussion of issues surrounding technology-related services.
The mark on the drawing must be a substantially exact representation of the mark shown on the specimen. See TMEP §§807.12–807.12(a)(iii) and §§807.12(d)–807.12(e) regarding agreement of the mark on the drawing and on the specimen. Furthermore, the designation must appear sufficiently prominent on the specimen (e.g., placement, size, or stylization) so that it will be perceived by consumers as a mark. See In re Dell Inc., 71 USPQ2d 1725, 1729 (TTAB 2004) (finding a mark "sufficiently prominent" even though it was "shown in a smaller type size than other words appearing on the webpage," given that it appeared "in a bullet listing of information about the product," and was placed "at the beginning of a line and [was] followed by the ‘TM’ trademark indicator"); TMEP §904.03(i)(B)(1). Compare In re Quantum Foods, Inc., 94 USPQ2d 1375, 1378 (TTAB 2010) (describing a mark as "prominently displayed" on the specimen when the mark appeared by itself above pictures relating to applicant’s goods in relatively large font and in a different color than some of the other text on the page) with In re Osterberg, 83 USPQ2d 1220, 1223 (TTAB 2007) (finding the mark not prominently displayed because it was buried in text describing the mark and, while the mark was shown in bold font, so was other matter). 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. See In re Osterberg, 83 USPQ2d at 1223.
The specimen must show the mark used in a manner that creates in the minds of potential consumers a direct association between the mark and the services. 37 C.F.R. §2.56(b)(2); See generally In re JobDiva, Inc., 843 F.3d 936, 941, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (quoting In re Ancor Holdings, LLC, 79 USPQ2d 1218, 1221 (TTAB 2006)) ("[T]he question is whether the evidence of JobDiva's use of its marks ‘sufficiently creates in the minds of purchasers an association between the mark[s] and [JobDiva's personnel placement and recruitment] services.’"); In re Adver. & Mktg. Dev., Inc., 821 F.2d 614, 620, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987) ("The ‘direct association’ test does not create an additional or more stringent requirement for registration; it is implicit in the statutory definition of ‘a mark used * * * to identify and distinguish the services of one person * * * from the services of others and to indicate the source of the services.’"); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973) ("The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor."); In re Cardio Grp., LLC, 2019 USPQ2d 227232, at *1 (TTAB 2019) (quoting In re Way Media, 118 USPQ2d 1697, 1698 (TTAB 2016) ("A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage.")).
Direct association is the minimum the specimen must show, and it may be established textually, contextually, or logically. In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973). What is necessary to establish direct association differs depending on the type of specimen submitted, that is, whether it is an advertising specimen or a rendering specimen.
Mark Used in Sales or Advertising of Services: For specimens showing the mark used in advertising the identified services, to establish the requisite direct association the specimen must contain a reference to the services and the mark must be used on the specimen to identify the services and their source. In re Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (citing In re WAY Media, Inc., 118 USPQ2d at 1698; ); In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010) (finding that, although the submitted specimens referenced the identified consulting services, the applied-for mark, as used on the specimens, would be perceived by the relevant public as identifying only applicant’s drug technology and thus the specimens failed to establish the required association between the mark and the identified services) . While the services need not be stated word for word, a sufficient reference to the services themselves or a general reference to the trade, industry, or field of use is required. See In re Pitney Bowes, Inc., 125 USPQ2d 1417, 1419-20 (TTAB 2018) (reversing the specimen refusal since the wording "outsourced mailing services" appeared directly below the mark on the webpage advertising and was a sufficient reference to applicant’s mailing, shipping, and delivery services); In re Florists’ Transworld Delivery, Inc., 119 USPQ2d 1056, 1062-63 (TTAB 2016); In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286 (TTAB 2008); see also TMEP §1301.04(h). However, if the alleged reference to the services is so vague that the services cannot be discerned, the specimen will not be acceptable. In re Chengdu AOBI Info. Tech. Co., 111 USPQ2d 2080, 2082 (TTAB 2011) ; see In re Monograms Am., Inc., 51 USPQ2d at 1318. See TMEP §1301.04(i) regarding examples of acceptable service-mark specimens.
Mark Used in Rendering of Services: For specimens showing the mark used in rendering the identified services, the services need not be explicitly referenced to establish the requisite direct association. See In re Metriplex, Inc., 23 USPQ2d 1315, 1316-17 (TTAB 1992) (noting that "the requirements specific to specimens which are advertising are not applicable" and finding the submitted specimens acceptable to show use of applicant’s mark in connection with data transmission services because the specimens showed "the mark as it appears on a computer terminal in the course of applicant's rendering of the service" and noting that "purchasers and users of the service would recognize [applicant’s mark], as it appears on the computer screen specimens, as a mark identifying the data transmission services which are accessed via the computer terminal"). Rather, direct association may be indicated by the context or environment in which the services are rendered, or may be inferred based on the consumer’s general knowledge of how certain services are provided or from the consumer’s prior experience in receiving the services. Id.; see In re WAY Media, Inc., 118 USPQ2d at 1698 . In other words, the context in which the services are provided and consumer knowledge and experience create an inference of the services without an explicit textual reference to the services. See TMEP §1301.04(i), Example 17 (CASHFLOW UNITS).
The applicant may respond to a specimen refusal for failing to show direct association by explaining the nature of the mark’s use or the manner in which the services are advertised or rendered. In re Metriplex, Inc., 23 USPQ2d at 1316 (finding the submitted specimens acceptable based, in part, on applicant’s explanation that the specimens showed the mark as it appeared on a computer terminal in the course of rendering the services). With respect to a particular industry’s typical use of marks in relation to specific services, it may also be helpful for the applicant to provide an explanation regarding industry practice concerning the use of the mark during the rendering of such services and how the applicant’s use comports with such practice. See TMEP §1301.04(i), Example 19 (design of speech bubbles).
The mere fact that the mark is displayed and the services are explicitly referenced or can be inferred from the context of the specimen does not automatically result in direct association between the mark and the services. See In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994). The specimen must associate the mark with the services such that the mark serves as a source identifier for those particular services. See In re WAY Media, Inc., 118 USPQ2d at 1698; cf. In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009) ("[T]he test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source." (emphasis added)). The requisite direct mark-services association is present when the specimen makes a direct link or connection between the mark and the identified services. See TMEP §1301.04(i), Example 17 (CASHFLOW UNITS) and Example 18 (RIDE 411).
Thus, a specimen is unacceptable if it fails to convey a proper nexus between the mark and the services, or if the services are too attenuated from the proposed mark, either in terms of proximity or logical connection. See, e.g., In re Monograms Am., Inc., 51 USPQ2d at 1319; In re Metriplex, Inc., 23 USPQ2d at 1316. The mere fact that wording from the identification of services appears somewhere on the specimen may not necessarily suffice for the mark-services association or nexus, if there is nothing else to connect that wording to the mark, such as proximity or additional text that establishes the connection.
In assessing whether there is a direct association between the mark and services, the examining attorney should consider the specimen’s content, layout, and overall look and feel, as well as any description of the specimen and industry practice relating to service-mark usage in advertising and rendering the services.
Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, are the statutory bases for refusing a specimen that does not meet the requirements of an acceptable service-mark specimen; such specimen is not acceptable because it does not show the mark in "use in commerce." For instance, if the mark does not appear on the specimen or the specimen shows use of the mark in connection with goods rather than the identified services, the specimen must be refused for failure to show service-mark use in commerce in connection with the identified services.
The applicant’s response options include submitting an acceptable substitute specimen or, if appropriate, amending the application to a §1(b) filing basis. See TMEP §806.03(c) regarding amending filing basis from §1(a) to §1(b), and §904.07 regarding requirements for substitute specimens. In some cases, the applicant may respond by providing clarification of the nature of the original specimen submitted, or an explanation of the content of the original specimen, to justify its acceptability.
The examining attorney may consider any of the following facts and evidence properly made of record:
If the specimen of record, the specimen description, the applicant’s response and explanations, and any additional proffered evidence are unpersuasive, a final refusal must issue, if the application is otherwise in condition for final. See 37 C.F.R. §2.63(b); TMEP §714.03.
A specimen may show the mark used as something other than a service mark for the identified services. For instance, it may show the mark used solely as a trade name, only as the name of a downloadable or recorded computer software program or application, exclusively as the name of a method, process, or system, or merely as informational or ornamental matter. See TMEP §§1202.01, 1202.03–1202.04, 1301.02(a), (e), (f). In such cases, the mark does not function as a service mark to identify and distinguish the applicant’s services and indicate their source. Thus, a failure-to-function refusal should issue under Trademark Act Sections 1, 2, 3, and 45 for marks seeking registration on the Principal Register. 15 U.S.C. §§1051─1053, 1127. For marks seeking registration on the Supplemental Register, the statutory basis for the failure-to-function refusal is Trademark Act Sections 23 and 45. 15 U.S.C. §§1091, 1127. However, if the mark identifies, for example, both a process and the identified services and the requisite mark-services association is present, no failure-to-function refusal should issue. See TMEP §§1301.02(e), 1301.04(j) (Example 21 (LEADING EDGE TONERS)).
As stated above, the issue of whether a designation functions as a mark usually is tied to the use of the mark, as evidenced by the specimen. Therefore, unless the drawing and description of the mark are dispositive of the failure to function without the need to consider a specimen, generally no refusal on this basis will be issued in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has submitted a specimen(s) with an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)). However, in a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the matter presented for registration does not function as a mark, the potential refusal should be brought to the applicant’s attention in the first Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis.
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for the examining attorney to issue a failure-to-function refusal where the mark on its face, as shown on the drawing and described in the description, reflects a failure to function. See In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *7 (TTAB 2020) (holding an application for registration filed pursuant to §44(e) subject to the requirement that the applied-for mark function as a mark); In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal in a §66(a) application).
See TMEP §1202 regarding use of subject matter as a trademark; §§1302–1305 regarding use of subject matter as a collective mark; and §§1306–1306.06(c) regarding use of subject matter as a certification mark.
Letterhead stationery, business cards, or invoices bearing the mark may be accepted if they create a direct association between the mark and the services. See 37 C.F.R. §2.56(b)(2). To create a direct association between the mark and services, the specimen does not have to spell out the specific nature or type of services; a general reference to the industry may be acceptable. In re Ralph Mantia Inc., 54 USPQ2d 1284 (TTAB 2000) (letterhead and business cards showing the word "Design" are acceptable evidence of use of mark for commercial art design services); In re Sw. Petro-Chem, Inc., 183 USPQ 371 (TTAB 1974) (use of mark on letterhead next to the name SOUTHWEST PETRO-CHEM, INC. found to be sufficient to show use of the mark for "consulting and advisory services relating to the making and using of lubricating oils and greases," when used for letters in correspondence with customers).
Letterhead or business cards that bear only the mark and a company name and address are not adequate specimens (unless the mark itself has a descriptive portion that refers to the service), because they do not show that the mark is used in the sale or advertising of the particular services recited in the application. In re Monograms Am., Inc., 51 USPQ2d 1317 (TTAB 1999) (letterhead specimen showing the mark MONOGRAMS AMERICA and the wording "A Nationwide Network of Embroidery Stores" held insufficient to support registration for consulting services for embroidery stores).
If the letterhead itself does not include a reference to the services, a copy of an actual letter on letterhead stationery bearing the mark is an acceptable specimen of use if the content of the letter indicates the field or service area in which the mark is used. In Monograms America, the Board indicated that the letterhead specimen might have been accepted if the applicant had submitted a copy of a letter to a store owner describing the services. 51 USPQ2d at 1319.
For live entertainment services, acceptable specimens include a photograph of the group or individual in performance with the name displayed, e.g., the name printed on the drum of a band. For any entertainment service, advertisements or radio or television listings showing the mark may be submitted, but the specimen must show that the mark is used to identify and distinguish the services recited in the application, not just the performer. See In re Ames, 160 USPQ 214 (TTAB 1968) (advertisements for records show use of the mark for entertainment services rendered by a musical group, where the advertisements prominently feature a photograph of musical group and give the name, address, and telephone number of a booking agent).
A designation that identifies only the performer is not registrable as a service mark. See TMEP §1301.02(b) regarding the registrability of names of characters or personal names as service marks, and §§1202.09(a)–1202.09(a)(iii) regarding the registrability of names and pseudonyms of performing artists.
Proper specimen analysis requires consideration of the nature of the identified services. Modern computer and technology-related services present special challenges because these services, and the terminology used to describe them, are continually evolving. In addition, any online activity entails the use of computer software, making it difficult to differentiate the various services provided online from the underlying technology used to provide them. As the Board has noted, "[a]lthough it may well be software that is generating the [services], in today's commercial context if a customer goes to a company's website and accesses the company's software to conduct some type of business, the company may be rendering a service, even though the service utilizes software." In re Ancor Holdings, LLC, 79 USPQ2d 1218, 1221 (TTAB 2006) ; see also In re JobDiva, Inc., 843 F.3d. 936, 121 USPQ2d 1122 (Fed. Cir. 2016) . ("[I]f the software is hosted on JobDiva’s website such that the user perceives direct interaction with JobDiva during operation of the software, a user might well associate JobDiva's marks with personnel ‘placement and recruitment’ services performed by JobDiva").
It may be unclear, based on the submitted specimen, whether the applicant is providing non-software services in a given field or subject matter (e.g., "financial retirement plan consulting services" in Class 36), or offering computer software or application services involving that same field or subject matter (e.g., "providing temporary use of on-line non-downloadable software for retirement planning" in Class 42), or both. Sometimes, an applicant that is actually providing on-line non-downloadable software services (e.g., "providing temporary use of on-line non-downloadable software for medical billing" in Class 42) misidentifies the services as the underlying function of the software (e.g., "medical billing" in Class 35). Similarly, the applicant may be using social networking websites to advertise non-social networking services (e.g., retail pet stores) and communicate with customers, leading the applicant to misidentify the services as "online social networking services" in Class 45.
Thus, a primary consideration in these instances is whether the specimen indicates that the applicant is actually performing the relevant service activities for others, or, for instance, merely providing software that allows users of the software to perform those activities themselves, or only offering an online game that is accessed via a social networking website. See TMEP §1301.04(i), Example 5 (ATHENACOORDINATOR), Example 7 (CLINICANYWHERE), and Example 14 (OUTERNAUTS).
Furthermore, some traditional services, and the associated terminology, may require fresh understanding and broader interpretation in the modern commercial environment. More and more traditional services are now offered online and, increasingly, multiple services are seamlessly integrated, creating difficulty in distinguishing the source of the services. For instance, television programs that were once provided only by broadcast television and cable outlets are now also accessible via streaming services like Netflix®, Hulu®, or YouTube®. Thus, typical service identification terms like "broadcasting," "distribution," and "transmission" have taken on new meaning in the modern marketplace. Thinking of traditional and other services more broadly and being cognizant of the current marketplace realities will also help the examining attorney determine whether the specimen properly shows use of the mark in direct association with the identified services.
When the nature of the services is not readily apparent from the information of record, such as the identification and specimen, the examining attorney may consult several resources for research and guidance, including: the notices and notes in the U.S. Acceptable Identification of Goods and Services Manual (ID Manual); the applicant’s and third-party websites; technology dictionaries, encyclopedias, and trade and industry publications; and the Office of Trademark Classification Policy & Practice. Finally, the examining attorney may require the applicant to provide further information about the services, pursuant to Trademark Rule 2.61(b), 37 C.F.R. §2.61(b).
As noted above, an applicant may submit a specimen that shows the mark as used in rendering the services. See 37 C.F.R. §2.56(b)(2). These specimens are often submitted in connection with modern technology-related services, and common types are discussed below.
For specimens showing use of the mark in rendering the services, an explicit, textual reference to the services or their trade, industry, or field of use is not necessary, but an indication of the services sufficient to establish direct association between the mark and the services is required. The examining attorney must refuse the specimen if neither the specimen itself nor the description of the specimen provides sufficient information to decipher the nature of the services, determine the manner of use, and assess whether the necessary direct mark-services association exists. See TMEP §1301.04(g)(i).
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, which is a generally known and accepted means of accessing many online services. In re Metriplex, Inc., 23 USPQ2d 1315, 1317 (TTAB 1992) (finding the submitted specimens acceptable to show use of applicant’s mark in connection with data transmission services because "we have a situation where the service are rendered through the means of a tangible item, namely, a computer terminal, so that the mark can appear on the computer screen, and the specimens show such use").
Some sign-in screens may include a reference to the services and effectively function as an advertisement. See TMEP §1301.04(i), Example 6 (MYFITAGE). Other sign-in screens may contain no reference to the services, but may nonetheless be acceptable if the overall content of the specimen sufficiently indicates the services. Or, the specimen description may explain the context of the services by stating the specimen is a sign-in screen for accessing the services and that applicant is offering the type of services being applied for. Such an explanation may provide a sufficient basis for accepting the sign-in screen specimen, as long as there is no contradictory information in the record indicating that the mark is not associated with the identified services. See TMEP §1301.04(i), Example 4 (STAFFTAP).
A title or launch screen is an on-screen graphic typically displayed at the beginning of entertainment content, such as video games or ongoing television programs, often with other information about the content featured. For services such as Class 41 entertainment services involving the provision, production, or distribution of entertainment content, screenshots of title or launch screens from the content may create the requisite direct association between the mark and the services. Thus, title or launch screens may be acceptable specimens as long as their nature as such is clear either from the overall look and feel of the specimen or from the applicant’s description of the specimen.
While showing the title or launch screen being displayed on any particular electronic device (e.g., television, computer, or smartphone) is not required, a specimen showing an electronic device bearing the title or launch screen may be acceptable without further explanation because it places the mark in the context of how the services are rendered. See TMEP § 1301.04(i), Example 14 (OUTERNAUTS). A title or launch-screen specimen showing only the mark but not the electronic device, with no specimen description or an insufficient description, may require a specimen description identifying the specimen as a title or launch screen and placing the mark in the context of the services. See TMEP §1301.04(i), Example 13 (DELICIOSO).
While title or launch-screen specimens may be acceptable to show service-mark use, the mark must be refused if the specimen shows that the mark is the title of a single creative work (e.g., the title or name of one episode of a television or radio program, one movie, or one show presented as a single event). See TMEP §§1202.08–1202.08(f) regarding titles of single creative works and §1301.02(d) regarding titles of radio and television programs.
Web pages from an applicant’s or a third-party’s website may be submitted as advertising. This type of specimen is acceptable if it shows the mark used in advertising the identified services and creates the required direct association by referring to the services and by showing the mark being used to identify and distinguish the services and their source. See 37 C.F.R. §2.56(b)(2); In re Florists' Transworld Delivery, Inc., 119 USPQ2d 1056, 1062 (TTAB 2016).
Web pages lacking a reference to the services may be acceptable if they show use of the mark in rendering the services. See 37 C.F.R. §2.56(b)(2); TMEP §1301.04(i), Example 14 (OUTERNAUTS).
Web pages from social-networking websites should be scrutinized to ensure that the mark is properly directly associated with the identified services. Some applicants may mistakenly mischaracterize their services as "social networking" because they assume that advertising or promoting their non-social-networking services via a social-networking website means they are providing social-networking services. For instance, an applicant may mistakenly file an application for "online social-networking services" and provide a Facebook® webpage as a specimen when, in fact, they operate a pet store and are only using the Facebook® website to advertise the pet store and communicate information to and messages with actual and potential customers. Such a specimen is not acceptable for the social-networking services since it does not demonstrate that the applicant is providing these services. See In re Florists' Transworld Delivery, Inc., 119 USPQ2d at 1057 ("[A]n applicant generally will not be able to rely on use of its social media account to support an application for registration of a mark for [the service of creating an online community for users].").
URL and Date Accessed/Printed Required for Web Pages. Due to the transitory nature of Internet postings, the URL for the web page of the specimen and the date the page was accessed or printed must both be provided to enable verification. 37 C.F.R. §2.56(c). Trademark owners can submit the URL and date directly on the specimen webpage itself, appearing anywhere on the page within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. This information may not be entered via examiner’s amendment. In rare situations, if the web page includes a photograph of the applied-for mark that directly associates the mark with the identified services (e.g., a picture showing a mark for restaurant services on a restaurant building) and that would otherwise be acceptable as a specimen of use for services, it need not include the URL and access or print date.
Specimens in applications and post-registration filings submitted prior to February 15, 2020 are "grandfathered" under the prior rules, until the application registers or is abandoned and cannot be revived or reinstated pursuant to 37 C.F.R §§2.64, 2.66, or 2.146, or until the acceptance or final rejection of the post-registration filing. Specimens and substitute specimens submitted on or after February 15, 2020, including those submitted in connection with applications and post-registration filings that were filed prior to February 15, 2020, are not grandfathered and must comply with the current specimen rules.
Software applications (apps) for smartphones and computer tablets are now commonly used to provide online services. 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. Common specimens for services rendered by means of such apps are usually screenshots of electronic devices showing the apps rendering the services. Such a specimen will not always depict proper service-mark use of the mark in connection with the identified services unless the displayed screenshot clearly and legibly shows the mark directly associated with the identified services as the services are rendered or performed via the app. Mere depiction of the mark in the screenshot without sufficient depiction of the activity identified in the services does not establish service mark use within the definition of "use in commerce" under Trademark Act Section 45. 15 U.S.C. §1127 ("For purposes of this chapter, a mark shall be deemed to be in use in commerce – (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce[.]") See TMEP §1301.04(i), Example 15 (KURBKARMA).
The following examples in this section would only be accepted by the USPTO if they included the required URL and date accessed or printed. See 37 C.F.R. §2.56(c).
Cloud-Computing Services
EXAMPLE 1
Mark: CSC CLOUDLAB
Relevant Services: Infrastructure as a Service (IAAS) services, namely, providing web-based use of virtualized computer hardware, networking, and storage equipment on a utility computing basis, namely, providing virtual computer systems and virtual computer environments through cloud computing, in Class 42.
Analysis:
- Specimen is described as "web page screenshot" and appears to be advertising.
- Mark is displayed near the top center of the webpage in large, color font, and in the middle center of the webpage at the beginning of a statement shown in bold font.
- Services are referenced in the following statements:
- "CSC CloudLab offers on-demand, web-based access to virtual machines and data centers."
- "CloudLab Cloud Application Testing Services delivers on-demand scalable, virtualized infrastructure."
- Direct mark-services association is present because the mark is used directly in connection with the services in textual statements describing the services, and is placed immediately above explicit/textual references to the services.
EXAMPLE 2
Original Specimen
.jpg "Screenshot of Parse webpage displaying fill-in fields for signing up for Parse software goods.")
Substitute Specimen
.jpg "Screenshot of Parse webpage adverising computer services.")
Mark: PARSE
Services: Platform as a service (PAAS) featuring computer software platforms offering server-side functionality to provide backend services, namely, data storage, push notifications and user management, all for mobile applications, in Class 42.
Analysis:
EXAMPLE 3
Mark: MONTAGABLE
Services: Computer software platform as a service (PAAS) featuring computer software platforms for application building, in Class 42.
Analysis:
EXAMPLE 4
Mark: STAFFTAP
Services: Software as a service (SAAS) services featuring software for use in staff management and related scheduling tasks, in Class 42.
Analysis:
EXAMPLE 5
Mark: ATHENACOORDINATOR
Services: Physician order support services and medical practice management services relating to medical tests and procedures, namely, verifying patient eligibility and benefits, handling scheduling requests, obtaining insurance pre-certifications, handling patient pre-registrations, and collecting self-pay balances from patients, in Class 35; and Software as a service (SAAS) services featuring software for use in communications between physicians and other participants in the health care system with respect to orders for medical tests and procedures, in Class 42.
Analysis:
Non-Downloadable Software Services
EXAMPLE 6
Mark: MYFITAGE
Services: Providing temporary use of non-downloadable computer software for retirement planning, in Class 42.
Analysis:
EXAMPLE 7
Mark:
Services: Medical Billing Support, in Class 35; and Providing on-line, non-downloadable, Internet-based software application for medical billing for physicians and health care institutions, in Class 42.
Analysis:
Application-Service-Provider (ASP) Services
EXAMPLE 8
Mark: INSITE TICKETING
Services: Application service provider (ASP), namely, hosting computer software applications for others in the field of ticketing and related ticketing services, in Class 42.
Analysis:
Telecommunications Services
EXAMPLE 9
Original Specimen
.jpg "Screenshot of GovHub webpage showing pictures of government officials and a fill-in field for leaving feedback.")
Substitute Specimen
.jpg "Screenshot of GovHub webpage showing sign-in fields for logging in and accessing on-line forum services.")
Mark: GOVHUB
Services: Providing on-line forums for transmission of messages among computer users, in Class 38.
Analysis:
EXAMPLE 10
Mark: HOMETOWN SOUNDS
Services: Electronic transmission and streaming of digital media content for others via global and local computer networks; Streaming of audio material on the Internet; Transmission services via the Internet, featuring MP3 files and music videos, in Class 38.
Analysis:
EXAMPLE 11
Mark:
Services: Broadcasting of video and audio programming over the Internet, in Class 38.
Analysis:
Entertainment Services
EXAMPLE 12
Mark: CINEMAX
Services: Entertainment services in the nature of providing entertainment programming and content, namely, on-going television programs, and related clips and graphics and information relating to television programming and content in the fields of comedy, drama, action, adventure via television, cable and satellite systems, the Internet, electronic communications networks, computer networks and wireless communications networks, in Class 41.
Analysis:
EXAMPLE 13
Mark: DELICIOSO
Services: Entertainment and education services, namely, ongoing television program concerning cooking and nutrition, in Class 41.
Analysis:
EXAMPLE 14
Mark: OUTERNAUTS
Services: Entertainment services, namely, providing online video games, in Class 41.
Analysis:
EXAMPLE 15
Mark: KURBKARMA
Services: On-line matching services for connecting automobile drivers with other drivers who are, respectively, searching for or departing from parking spaces accessible via a mobile application, in Class 35.
Analysis:
EXAMPLE 16
Mark: VTECH DIRECT
Services: Providing a web site for online business-to-business store services featuring wireline telephony products and wireless fidelity streaming music devices; online business-to-business store featuring wireline telephony products and wireless fidelity streaming music devices, in Class 35.
Analysis:
EXAMPLE 17
Mark: CASHFLOW UNITS
Services: Investment products, namely, wealth management and performance tracking, and providing financial advisory and financial portfolio management services, in Class 36.
Analysis:
EXAMPLE 18
Mark: RIDE 411
Relevant Services: Providing an online search engine service for new and used automobile listings and automobile related information; Providing specific information as requested by customers via the Internet; Provision of Internet search engines; Provision of search engines for the Internet, in Class 42.
Analysis:
EXAMPLE 19
Mark: (stylized speech bubbles)
Services: Online social networking services, in Class 45.
Analysis:
EXAMPLE 20
Mark: IObit
Services: Computer programming; Computer software design; Conversion of data or documents from physical to electronic media; Data conversion of computer programs and data, not physical conversion; Duplication of computer programs; Hosting of web sites; Installation of computer software; Maintenance of computer software; Research and development for new products for others; Research and development of computer software; Updating and maintenance of computer software, in Class 42.
Analysis:
EXAMPLE 21
Mark: LEADING EDGE TONERS
Goods: Numerous goods including toner; toner cartridges, in Class 2; components for laser toner cartridges; and printer parts, in Class 9; and Ink sticks, in Class 16.
Analysis:
