In the past few years, many trademark practitioners have noticed an increase in the number of rejections for trademark specimens – the documents that applicants submit to the United States Patent and Trademark Office (USPTO) to prove that they are using the mark in U.S. commerce. Two recent decisions from the Trademark Trial and Appeal Board (TTAB) should make the process much easier, particularly where a mark is for software or technical services.
In the U.S., trademark rights arise from use of a mark in commerce (i.e., in connection with the sale of goods or services). What constitutes “use in commerce” depends on the goods/services. Generally, goods require sales of the actual, trademarked products. In contrast, with services, use in commerce can be based on sales or advertising of the trademarked services. In either case, the applicant must submit a specimen that shows:
The mark in substantially the same form as it appears in the application;
The goods/services (or a textual description of the goods/services); and
Some indication that the goods or services are currently available for purchase.
As part of its efforts to cut down on fraudulent trademark applications, the USPTO has steadily increased its scrutiny of specimens over the past few years. The impact has been experienced primarily by domestic, U.S. applicants, particularly where (1) the mark is used for goods and related services or (2) the mark is used for downloadable and non-downloadable software.
In re Pitney Bowes, Inc., 125 U.S.P.Q.2d 1417 (TTAB 2018) dealt with the first scenario. The applicant (PB) is a multinational company that (among other things) offers postage meters, mailing equipment, and shipping services. In January 2015, PB applied to register the following logo for various Class 39 mailing and shipping services:
PB relied on the following specimen, which depicts a self-service kiosk that consumers can use to mail or ship items:
What followed was an 18-month dispute with the examining attorney as to whether the specimen showed use in commerce with shipping services. According to the examining attorney, the specimen showed “a webpage describing a self-service kiosk that consumers use to mail and ship items, but not that the applicant itself provides these services.” PB argued that the specimen did show use in commerce with shipping services, and also provided an explanation of how the company provided shipping services through the kiosks. The examining attorney disregarded the explanation, and PB appealed.
The TTAB did agree with the examining attorney that the specimen raised some reasonable doubt as to whether PB was, in fact, providing shipping services. However, “[the] explanation of the specimen and how [PB] provides the outsourced mailing services referenced on the specimen resolved the ambiguity, and the refusal should not have been maintained.” In other words, an explanation from the applicant on how it provides services can be sufficient to overcome a specimen refusal for a service mark.
In re Minerva Associates, Inc., 125 USPQ2d 1634 (TTAB 2018) dealt with the second scenario, where an applicant seeks registration of a mark for downloadable and non-downloadable (SaaS) software. The USPTO treats downloadable software as a Class 9 good, and non-downloadable software as a Class 42 service, even though the two versions of the software may be functionally identical. In Minerva, the applicant applied to register the word AWLVIEW as a trademark for inventory management software in Classes 9 and 42, submitting the following screenshots of the login page and search screens from the applicant’s software as the specimen of use:
The examining attorney approved the specimen for Class 42, but rejected it for Class 9, finding that the screenshots merely showed advertising material. On appeal, the TTAB reversed, citing TMEP § 904.03(e), which states that an acceptable specimen for software “might be a photograph or printout of a display screen projecting the identifying trademark for a computer program.” Because consumers would see the mark while using the applicant’s software, the TTAB found that the specimen “shows the applied-for mark used in connection with the goods” in a way that “would be perceived as a trademark identifying the source of those goods.” In fact, the TTAB noted that the TMEP specifically states that “it is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce.”
These two cases highlight an important practice tip – pick up the phone and call the Examining Attorney to clarify any questions or misunderstandings there may be about the goods/services and the specimens that have been submitted (and if that does not work, reach out to the Managing Attorney.) In both of these cases where the TMEP clearly supported the Applicant’s position, a call with the Examining Attorney would likely have avoided the effort and expense of a TTAB proceeding.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
Jon Jekel is an Associate in the Silicon Valley office, where he advises artists, inventors, entrepreneurs, and Fortune 500 companies on business and intellectual property matters. In that capacity, he has served clients in a wide array of industries, including analytics, cosmetics, cleantech, consumer products, cloud computing, computer...
Lisa Greenwald-Swire is a Trademark and Copyright Principal in the Silicon Valley office of Fish & Richardson. Her practice focuses on global trademark counseling and prosecution including brand strategy, strategic portfolio development, licensing, and trademark rights on the...