- Posted on: Feb 14 2019
Trademarks are a protection for your brand, in that they protect what consumers perceive as the source of the goods or services that you provide. It is how companies or individuals can ensure that their brand name, brand logo and/or slogan are protected from third parties. The all-important ® symbol can symbolize the protection of your brand for years to come from potential infringers. However, before you reach that point, you must provide proof that you are using the trademark in commerce for your goods and services.
In commerce does not mean that you have definitively made a sale of your goods and/or services, but that good/service must be available to consumers, meaning that it cannot be a private offering. This shows that you are entitled to registration throughout the United States on the basis of this trademark. The way that use is proven in the trademark sense is through a document called a “specimen.”
While it sounds clinical, a specimen (or a “spec” for those in the know) is just a pinpoint showing of the particular good/service sought to be registered in the open market. Both goods and services are evaluated differently, and certain specs may be more successful (or easier to use) than others based on the classification for the trademark. Take a T-shirt, for example. While brands will often put their name or logo on the front of the shirt, this often will not suffice to prove use in commerce. This will be denied as “merely ornamental,” meaning that the examining attorney for your trademark did not determine that the screen print of the front of the shirt clearly identifies the source of the goods. Rather, a proper spec would be a hangtag (similar to the hanging price tag you will often see on clothing in stores), or a label on the back of the collar, waistband, etc. However, this obviously would not be an appropriate spec for a website creator, who would have no physical object to “label.” Instead, website screenshots will typically be used to show this service.
You are still dealing with another human being, so specs that you might think will get the job done may still be rejected by the examining attorney for the application. However, there are ways to ensure that you submit the best spec to keep your application moving forward. The most important thing to keep in mind that it must have the applied-for trademark (as the source of the goods/services) and show the goods/services that are being offered for this mark. Therefore, showing an “about us” page for clothing that does not show the clothing for sale will not be appropriate, and will, therefore, be rejected. We’ll walk through the best specs to show your trademark below, split into both “goods” and “services” categories. And remember, if you have any additional questions regarding appropriate specs for your trademark, the knowledgeable trademark attorneys at Dunlap, Bennett & Ludwig are always willing to advise on this often challenging issue.
Goods: must show the trademark in connection with the goods. This would include a label or a tag (not a screen print), packaging (if the box clearly shows the trademark – a shipping label is not sufficient by itself), or a website (must show a “checkout” button that shows the goods are available in commerce – simply showing the goods without this “checkout” button will be rejected as “merely ornamental”). If it’s an app or downloadable goods, you must show where the object can be downloaded with the appropriate “download” button.
Services: this will typically be shown through a website screenshot (but remember, it must show both the trademark and a connection to the services applied for in the application). If a website is not available, a brochure/flyer may be acceptable, a business card may be approved, or even letterhead that clearly shows a relationship between the trademark and the services offered. If it is a store, a sign or other physical displays can be used as long as it clearly shows the services offered with that sign.
Posted in: Intellectual Property - Trademarks