Last week the Trademark Trial and Appeal Board affirmed the refusal of a specimen for retail store services featuring medical devices,” finding that the specimens the trademark owner submitted were unacceptable to establish a connection between the mark and services. Below, we provide best practices for submitting trademark specimens of use to supports your application.
Specimen Refused for “Retail Services”
We have written many times that poor specimens are among the most common objections to a trademark application and while it may seem that submitting use of your mark is straightforward, it is not. In this particular case, the services were for “retail services featuring medical devices” and no specimen showing a nexus between the mark and “retail services” was ever presented to the USPTO. Although specimens showing medical devices being sold were provided, the specimens did not support that medical devices were being sold in a retail environment. Perhaps the services were similarly not properly defined. Remember, you cannot amend your goods/services description after filing, unless it is to further narrow the identification, so be sure you are clear on what you are filing at the time of filing.
Here are some guidelines for supporting use of your mark:
For goods: You must show use of the mark on tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods.
For services: You must show a direct association between the mark and the services on advertising and marketing materials, brochures, photographs of business signage and/or billboards, or webpages that show the mark used in the actual sale, rendering, or advertising of the services. When submitting specimens for services, remember the services must be provided to third parties.
Submit a specimen for each and every good or every service listed in your application. You must be using your trademark for each and every listed item in your identification.
If you require assistance with your trademark application or have any questions about this post, please contact us.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a focus on trademarks and copyrights, as well as advertising issues related to promoting clients’ brands. Stacey has been recognized by her peers as a Super Lawyer® for her outstanding knowledge and services in intellectual property law. She can be reached at firstname.lastname@example.org.
Stacey is also the founder and lead instructor of Trademarkabilities™, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be efficient and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.