As stated in section 904 Specimens of the Trademark Manual of Examination Procedure:

Specimens are required because they show the manner in which the mark is seen by the public. Specimens also provide supporting evidence of facts recited in the application.

An application for registration under §1(a) of the Trademark Act must include one specimen for each class, showing use of the mark on or in connection with the goods, or in the sale or advertising of the services, in commerce. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv) and 2.56(a). If an application under §1(a) is filed without a specimen, the examining attorney must issue an Office action requiring the applicant to submit one specimen for each class, with an affidavit or declaration under 37 C.F.R. §2.20 stating that the specimen was in use in commerce on the filing date of the application. The Office action must also indicate that, pending submission of an acceptable specimen, registration is refused because the applicant has not provided evidence of use of the mark in commerce. 15 U.S.C. §§1051(a)(1) and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56(a).

In an application for registration under §1(b) of the Trademark Act, no specimen is required at the time the application is filed. However, before a registration will issue, the applicant must file an allegation of use that includes one specimen for each class, showing use of the mark in commerce on or in connection with the goods or in the sale or advertising of the services. 37 C.F.R. §§2.56(a), 2.76(b)(2), and 2.88(b)(2).

No specimen showing use of the mark is required in an application based solely on §44 or §66(a) of the Trademark Act, 15 U.S.C. §1126 or §1141f(a). While a §44 or §66(a) applicant must assert a bona fide intent to use the mark in commerce, the applicant is not required to assert actual use in commerce prior to registration. Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984); TMEP §§1009 and 1904.01(d).

If the nature of a specimen is unclear, the applicant must explain what it is and how it is used.

A copy or reproduction of the drawing is not an acceptable specimen. 37 C.F.R. §2.56(c).

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  • Definition of Specimen.
    • In re Settec, Inc., Serial No. 76181456, (TTAB 2006).
      • Trademark Rule 2.56(b)(1) provides: "A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods. The Office may accept another document related to the goods or the sale of the goods when it is not possible to place the mark on the goods or packaging for the goods."
  • Trademark Rule 2.88(b)(2), requires a specimen of the mark as actually used in commerce along with a Statement of Use.
    • In re Settec, Inc., Serial No. 76181456, (TTAB 2006).
      • Trademark Rule 2.88(b)(2), applicable to this application because applicant filed its specimen with its Statement of Use, requires a specimen of the mark as actually used in commerce, and specifically refers to Rule 2.56 for the requirements for specimens.
  • Whether or not a term functions as a service mark/trademark necessarily depends on how that term is used and how it is perceived by potential recipients of the services/goods, considering any other evidence of record bearing on the question of what impact applicant's use is likely to have on purchasers and potential purchasers.
    • In re Settec, Inc., Serial No. 76181456, (TTAB 2006).
      • In making this kind of determination, the Board recently restated a principle in the context of reviewing a specimen for a service mark that fits well with our review of applicant's alleged trademark: " … [W]hether or not a term functions as a service mark [trademark] necessarily depends on how that term is used and how it is perceived by potential recipients of the services [goods]," considering "any other evidence of record bearing on the question of what impact applicant's use is likely to have on purchasers and potential purchasers." In re Ancor Holdings, LLC., ___ USPQ2d ____(TTAB SN 76213721 April 28, 2006), citing to In re Walker Research, Inc., 228 USPQ 691, 692 (TTAB 1986) and In re International Environmental Corp., 230 USPQ 688 (TTAB 1986).
  • Whether a specimen is a display associated with the goods is a question of fact.
    • In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007)
      • Whether a specimen is a display associated with the goods is a question of fact. Land's End Inc. v. Manbeck, 797 F.Supp. 311, 24 UPSQ2d 1314, 1316 (E.D. Va. 1992); In re Hydron Technologies Inc., 51 USPQ2d 1531, 1533 (TTAB 1999); In re Shipley Co. Inc., 230 USPQ 691, 694 (TTAB 1986).
    • In re Valenite Inc., Serial No. 76482852, (TTAB 2007)
      • Moreover, it must be remembered that whether a specimen is mere advertising or whether it is a display associated with the goods is a question of fact which must be determined in each case based on the evidence in that particular case. In re Shipley Co., 230 USPQ 691 (TTAB 1986).
    • In re Hydron Technologies, Inc., (TTAB 1999).
      • Whether a specimen is merely advertising or whether it is a display associated with the goods is a question of fact which must be determined in each case based on the evidence in that particular case. In re Shipley Co., 230 USPQ 691 (TTAB 1986). In that case, the applicant displayed the mark at booths at trade shows. The crucial factor was that the mark was being used at the point of sale, i.e., at the location where the goods could be ordered, even though the goods identified by the mark were not present when the order was placed. The Board held that the prominent display of the mark on the booth where the goods could be ordered created the association between the mark and the goods.
  • A crucial factor in the analysis whether the specimen is mere advertising or whether, in addition to advertising, the specimen is also a display associated with the goods is if the use of an alleged mark is at a point of sale location.
    • In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007)
      • We must determine whether the specimen is mere advertising or whether, in addition to advertising, the specimen is also a display associated with the goods. "A crucial factor in the analysis is if the use of an alleged mark is at a point of sale location. A point of sale location provides a customer with the opportunity to look to the displayed mark as a means of identifying and distinguishing the source of the goods." Land's End Inc. v. Manbeck, supra, citing In re Shipley Co. Inc., supra.
  • Another factor in the analysis of whether a specimen is an acceptable display used in association with the goods is whether the mark is displayed in a such a way that the customer can easily associate the mark with the goods.
    • In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007)
      • Another factor in the analysis of whether a specimen is an acceptable display used in association with the goods is whether the mark is displayed in a such a way that the customer can easily associate the mark with the goods. In re Dell, Inc., supra at 1728. See also, Land's End Inc. v. Manbeck, supra at 24 USPQ2d 1316 (the prominent display of the mark in the catalog combined with the point of sale nature of the display constitutes a display associated with the goods); In re Hydron Technologies Inc., supra at 1534 (the mark was prominently featured in the infomercial three times); In re Shipley, supra (the mark was prominently displayed on the trade show booth); TMEP §904.06 ("It must bear the trademark prominently").
  • The mere use of a superscript "tm" cannot transform a nontrademark term into a trademark.
    • In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007)
      • FOOTNOTE 4: "The mere use of a superscript "tm" cannot transform a nontrademark term into a trademark. In re Brass-Craft Manufacturing Co., 49 USPQ 1849, 1853 (TTAB 1998); In re Remington Products Inc., 3 UPSQ2d 1714, 1715 (TTAB 1987). The ™ symbol is not so prominently displayed that it outweighs the informational nature of CondomToy in the text of the webpage."
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • In addition, in the particular bullet fact, the mark appears at the beginning of a line and is followed by the "TM" trademark indicator. This use of the designation "TM" next to QUIETCASE lends a degree of visual prominence to the term. But see, In re Brass-Craft Manufacturing Co., 49 USPQ2d 1849 (TTAB 1998); In re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987) (mere use of the "TM" indicator cannot transform an otherwise unregistrable term into a trademark).
  • The speciman should depict the mark prominently enough that consumers will recognize the mark as a trademark.
    • In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007)
      • Unlike the mark in the Dell case where the mark at issue was set out from the surrounding text as the first word in a bullet list, CondomToy condom is not so prominent that consumers will recognize it as a trademark for condoms. In fact, viewers of the webpage will have to search through the descriptive text even to find the purported mark. Cf. In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864)(the manner in which the purported mark is used does not support a finding that consumers would perceive it as a mark); In re Gilbert Eiseman, P.C., 220 UPSQ 89, 90 (TTAB 1983)(purported mark conveys advertising or promotional information rather than identifying and distinguishing source); In re Royal Viking Line A/S, 216 UPSQ 795, 797 (TTAB 1982)(purported mark would not be perceived as a source indicator); In re Morganroth, 208 USPQ 284, 288 (TTAB 1980)(the purported marks was so obfuscated in the specimen that it was not likely to make any impression on the reader); In re Dun-Donnelley Publishing Corp., 205 USPQ 575, 578 (TTAB 1979)(purported mark would be perceived as a indicia of the contents of the magazine, not as an indicia of source).
  • Nothing prohibits the registration of a mark in an application that contains only "temporary" specimens provided that the specimens were actually used in commerce.
    • In re Chica, Inc., Serial No. 76627857, (TTAB 2007).
      • Nothing prohibits the registration of a mark in an application that contains only "temporary" specimens provided that the specimens were actually used in commerce.
  • Webpages satisfy the criteria that the specimen (1) include a picture of the relevant goods; (2) show the mark sufficiently near the picture of the goods to associate the mark with the goods; and (3) contain the information necessary to order the goods.
    • In re Valenite Inc., Serial No. 76482852, (TTAB 2007)
      • As indicated, applicant's specimens are two webpage printouts from the website http://www.valenite.com. Relying on Lands' End Inc. v. Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992), and In re Dell, Inc., 71 USPQ2d 1725 (TTAB 2004), applicant argues that the webpages are displays associated with the goods. The examining attorney, on the other hand, contends that the webpages do not meet the criteria set forth in Lands' End and Dell with respect to displays associated with the goods, because "the mark is not associated with the goods," and there is not "sufficient ordering information." (Brief p. 2)… We find that the webpage satisfies the criteria set forth in Lands' End and Dell that the specimen (1) include a picture of the relevant goods; (2) show the mark sufficiently near the picture of the goods to associate the mark with the goods; and (3) contain the information necessary to order the goods. In reaching this finding, we are mindful of the observation in Dell that "a well recognized fact of current commercial life [is] that many goods and services are offered for sale on-line, and that on-line sales make up a significant portion of trade." 71 USPQ2d at 1727. There is nothing in the record to suggest that this observation is any less apt three years after it was made.
  • Moreover, it is not required that the mark and the term ‘products' (or the name of the product, for that matter) appear adjacent to each other in displays (webpages) for goods.
    • In re Valenite Inc., Serial No. 76482852, (TTAB 2007)
      • However, neither Lands' End nor Dell requires that the mark and the term ‘products' (or the name of the product, for that matter) appear adjacent to each other. In the context of this webpage, VALPRO is prominently displayed and used in a manner that purchasers will recognize it as a trademark for applicant's goods.
  • The argument that the applicant would not use a mark on accessories such as T-shirts if the applied-for mark did not function as a mark for applicant's primary products, skates, assumes, rather than proves that the applied-for mark is perceived as a mark separate and apart from the mark shown on the labels submitted as specimens.
    • In re Miller Sports, Inc., Serial No. 75/143,020, (TTAB 1999)
      • We are not persuaded otherwise by applicant's arguments. While the brochure submitted by applicant shows an advertisement indicating that applicant offers T-shirts with the applied-for mark as ornamentation thereon, this brochure does not demonstrate use of the applied-for mark on the goods identified in this application. Further, we find applicant's contentions regarding the applied-for mark on T-shirts to be unavailing. Applicant is essentially arguing that it would not use the applied-for mark on accessories such as T-shirts if the applied-for mark did not function as a mark for applicant's primary products, skates. This contention assumes, rather than proves, that the applied-for mark is perceived as a mark separate and apart from the mark shown on the labels submitted as specimens. Nor do we find the facts herein analogous to the facts in Institut National des Appellations D'Origine v. Vintners Int'l. Co., Inc., supra. Rather than omitting a geographically descriptive adjective which appeared on the wine label involved therein in smaller print and on a different line from the applied-for mark, the case before us involves a design that comprises the initial letter of a single word. It is immaterial that the word may be a surname.
  • A website page which displays a product, and provides a means of ordering the product, can constitute a display associated with the goods, as long as the mark appears on the webpage in a manner in which the mark is associated with the goods.
    • In re Genitope Corporation, Serial No. 76470648, (TTAB 2006).
      • In Dell, the Board held that "a website page which displays a product, and provides a means of ordering the product, can constitute a ‘display associated with the goods,' as long as the mark appears on the webpage in a manner in which the mark is associated with the goods." Id. at 1727. In support of this conclusion, the Board pointed out that "[i]t is a well-recognized fact of current commercial life that many goods and services are offered for sale on-line, and that on-line sales make up a significant portion of trade."
  • It must be remembered that a webpage specimen when it is actually viewed will fill the consumer's monitor screen meaning the mark will appear larger than it does in the submitted specimen.
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • The Examining Attorney is also correct that the mark QUIETCASE is shown in a smaller type size than other words appearing on the webpage. However, it must be remembered that the specimen is a webpage, and that when it is actually viewed it will fill the consumer's monitor screen. Thus, the mark will appear larger than it does in the specimen contained in the file, or as reproduced in this opinion.
  • Applicant's mere statement that he distributed copies of the webpage at sales presentations is insufficient to transform the webpage from advertising into a display used in association with the goods
    • In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007)
      • In further support of his claim that the use of the mark in the Intellx webpage is a display used in association with the goods, applicant argues that the webpage was used in sales presentations. Applicant attested to the facts that he has "personally attended an estimated 20 sales presentations in the United States," that he has personally handed out copies of the webpage at the sales presentations, and that he was successful in obtaining orders for condoms at the sales presentations. Based on our review of the record in this case, applicant's webpage is simply advertising or promotional material and it does not constitute a display used in association with the goods. As discussed previously, because the mark is not prominently displayed in the web page, it is unclear whether purchasers of the INSPIRAL condoms at these sales presentations associate "CondomToy condom" as a source indicator for condoms.
    • In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007)
      • Moreover, applicant's mere statement that he distributed copies of the webpage at sales presentations is not sufficient to persuade us that the Intellx webpage is a display used in association with the goods. Applicant's declaration lacks sufficient detail to transform the webpage from advertising into a display used in association with the goods. For example, there is no discussion regarding how the applicant used the webpage at sales presentations to make an association between the mark and the products or whether consumers, in fact, associated the mark with the products. Without sufficient detail, any statement by an applicant that advertising copy has been used in the sale of a product potentially transforms every advertising brochure, flyer, leaflet, etc. into a display used in association with the goods. Congress did not create the use requirement of a trademark as a "straw man" to be so easily knocked down by a pro forma statement that the advertising material displaying the mark is used in connection with actual sales of the product. The use of advertising material in connection with the sales of a product does not ipso facto make it a display used in association with the goods sufficient to support technical trademark use for registration.
  • We are not stating categorically that advertising and promotional material used at sales presentations can never be considered a display used in association with the goods. However, the mere statement that advertising and promotional materials are used in connection with sales presentations is not sufficient, in and of itself, to transform advertising and promotional materials into displays used in association with the goods.
    • In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007)
      • We are not stating categorically that advertising and promotional material used at sales presentations can never be considered a display used in association with the goods. However, the mere statement that advertising and promotional materials are used in connection with sales presentations is not sufficient, in and of itself, to transform advertising and promotional materials into displays used in association with the goods.
  • Case Finding: Fact sheet brochure specimens did not constitute a display associated with the goods, but rather were merely advertising material because, among other reasons, the picture of the goods in the ad did not constitute a picture of applicant's computer software, whether in use or otherwise.
    • In re Valenite Inc., Serial No. 76482852, (TTAB 2007)
      • We find that the present situation differs from In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997), where the Board held that the applicant's fact sheet brochure specimens did not constitute a display associated with the goods, but rather were merely advertising material. In MediaShare, the fact sheet did not qualify as a display associated with goods because, among other things, "none of the computer monitor display screens reproduced in applicant's ‘fact sheet' brochure … clearly appears to constitute or include a picture of applicant's ‘PB.WEB' computer software, whether in use or otherwise." Id. at 1306. In contrast, in the instant case there are multiple pictures of VALPRO goods.
  • Case Finding: Applicant's specimen appears to be a mere drawing of the goods with an illustration of how the mark may be displayed and not an actual specimen that applicant used in commerce. Indeed, applicant describes the specimen as "a representation of an actual piece of jewelry." Inasmuch as applicant has not explained how this drawing was itself actually used.
    • In re Chica, Inc., Serial No. 76627857, (TTAB 2007).
      • Applicant's specimen appears to be a mere drawing of the goods with an illustration of how the mark may be displayed and not an actual specimen that applicant used in commerce. Indeed, applicant describes the specimen as "a representation of an actual piece of jewelry." Inasmuch as applicant has not explained how this drawing was itself actually used, we affirm the examining attorney's requirement for an acceptable specimen.
  • Case Finding: In Land's End, the specimen of trademark use at issue was a mail order catalog that featured an order form and a telephone number so that a customer could order a product directly from the catalog.
    • In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007)
      • In the above-noted cases, the determinative factor was that the mark was used at the point of sale (i.e., the location where the goods could be ordered). In Land's End, the specimen of trademark use at issue was a mail order catalog that featured an order form and a telephone number so that a customer could order a product directly from the catalog.
    • In re Hydron Technologies, Inc., (TTAB 1999).
      • As applicant points out, the court in the Lands' End case emphasized the proximity between the pictures of the goods in the catalog and the mark used in connection with them. The space or pages between the mark and the illustration of the goods, on the one hand, and the ordering information, on the other, was not discussed, and properly so. The question was whether the catalog, which was used at the point where the customer decided to purchase the goods and ordered them, showed the mark in close proximity to the goods and in such a way that the prospective purchaser would understand the mark as identifying the source of the goods.
    • In re Hydron Technologies, Inc., (TTAB 1999).
      • The court did not hold it fatal to the acceptability of the catalog as a point-of-purchase display that it showed the ordering information farther away from the depiction of the goods than the mark was shown. In a similar sense, the important fact in the instant case is that the goods are shown either immediately before or immediately after the mark is displayed. That the ordering information is not shown in direct proximity to when the mark and the goods are shown does not detract from the fact that sequentially depicting the mark and the goods creates an association between the two in the mind of a person watching the video.
  • Case Finding: The TTAB likened a trade show booth to a sales counter and concluded that since the mark was prominently displayed, the customer would associate the mark with the products in deciding whether to buy the products.
    • In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007)
      • The Shipley case involved a mark prominently displayed at a trade show booth where orders for products were taken. The Board likened the trade show booth to a sales counter and concluded that since the mark was prominently displayed, the customer would associate the mark with the products in deciding whether to buy the products.
  • Case Finding: Informercials.
    • In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007)
      • Hydron involved an infomercial aired on QVC, a cable television channel devoted to shopping. Programming on this channel consists of advertising products and offering to send them to viewers who call and order them by telephone. In the infomercial at issue, the mark was displayed three times followed by photographic representations of the products. A telephone number was displayed during the infomercial for placing an order for the products.
    • In re Hydron Technologies, Inc., (TTAB 1999).
      • The case now before the Board presents an analogous situation. The mark sought to be registered is shown in the infomercial in close association with pictures of the goods bearing the mark "HYDRON." As we noted above, the images immediately preceding or immediately following the mark prominently feature pictures of the goods. The information on how to order the goods is also given within a reasonable time of when the mark and the goods are shown. The infomercial, like the catalog in Lands' End, supra, is "by no means mere advertising." Instead, it is a basis upon which a customer can identify the products he or she wants to purchase, make the decision to purchase them, and place the order. Based on the evidence before us in the instant case showing the use of the mark by this applicant, we have reached the conclusion that the use of the slogan "HYDRON MAKES THE DIFFERENCE" in this infomercial creates an association between the mark and the goods. The test for constituting a display associated with the goods is therefore satisfied.
    • In re Hydron Technologies, Inc., (TTAB 1999).
      • The Examining Attorney argues that too much is going on in the infomercial and too much time elapses between the time the mark is shown and the time the information about how to order the goods is provided for a viewer to associate the slogan with applicant's products. In our view, this is simply not the case. Moreover, the characterization of the time as excessive may be more of a comment on the quality of the production of the infomercial than an argument against finding that the infomercial is an acceptable specimen as a point-of-purchase display associated with the goods.
    • In re Hydron Technologies, Inc., (TTAB 1999).
      • When the whole infomercial is considered as a viewer would perceive it, it is clear that the slogan sought to be registered is associated with the goods which are the subject of the entire video. Customers and potential customers are likely to understand that "HYDRON MAKES THE DIFFERENCE," shown three times during the presentation, each time back-to-back with the photographic representation of the goods, identifies the source of the skin care products which are pictured.
    • In re Hydron Technologies, Inc., (TTAB 1999).
      • It is also clear that the infomercial is a point-of-purchase display in the same sense that the catalog in the Lands' End case was.
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • In the context of the specimen webpage, we find that QUIETCASE is sufficiently prominent that consumers will recognize it as a trademark for the computer hardware shown on the webpage. See In re Hydron Technologies Inc., 51 USPQ2d 1531 (TTAB 1999), in which the Board found that copies of individual images taken from a video recording of an infomercial was a display associated with the goods, even though the mark was shown by itself on a separate screen print, and there was always intervening material between the showing of the mark and the ordering information.
  • Case Finding: A website page which displays a product, and provides a means of ordering the product, can constitute a ‘display associated with the goods,' as long as the mark appears on the webpage in a manner in which the mark is associated with the goods.
    • In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007)
      • Finally, in a case involving a webpage as a specimen for computer products, the Board held that "a website page which displays a product, and provides a means of ordering the product, can constitute a ‘display associated with the goods,' as long as the mark appears on the webpage in a manner in which the mark is associated with the goods." In re Dell, Inc., 71 UPSQ2d 1725, 1727 (TTAB 2004).
  • Case Finding: Specifically, because the mark CondomToy condom appears as part of the sentence, "That's why Inspiral is also called a CondomToy™ condom," the commercial impression that is conveyed, particularly because of the use of the indefinite article "a" before CondomToy™ condom," is that CondomToy condom is a descriptive term for condoms sold under the Inspiral trademark.
    • In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007)
      • As can be seen from applicant's webpage, a package of condoms is prominently featured. The webpage and the package of condoms featured in the webpage prominently display the INSPIRAL trademark. Also, the Intellx logo is prominently displayed in the upper left-hand corner of the website, as well as the legend "The Condom With Curves" directly below the logo. Buried in the middle of the text is the purported mark.

        CondomToy condom is not so prominently displayed in the website that customers will easily associate the mark with the products. While the mark is printed in bold type, so are the terms "natural beautiful curves," "CRAZY sexual friction!" and "my favorite." Under these circumstances, prospective customers are likely to view the term "CondomToy" as a descriptive term, advertising puffery, or merely informational (e.g., INSPIRAL condoms have "natural beautiful curves," provide "Crazy sexual friction," and are "my favorite" condom, as well as being a "CondomToy"), rather than as a trademark.4 Specifically, because the mark CondomToy condom appears as part of the sentence, "That's why Inspiral is also called a CondomToy™ condom," the commercial impression that is conveyed, particularly because of the use of the indefinite article "a" before CondomToy™ condom," is that CondomToy condom is a descriptive term for condoms sold under the Inspiral trademark.

  • Case Finding: Because the specimen webpage does not provide a means of ordering the product, it is merely informational or promotional material and not acceptable to show trademark use on goods.
    • In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007)
      • With respect to the webpage as a point of purchase display, the webpage does not directly provide a means for ordering the condoms. There is no telephone number or online process for ordering the condoms. Although, the webpage includes a link entitled "Where to Buy," there is no information in the record regarding what that link includes. In his brief, applicant explains that this link connects shoppers to online distributors of the goods. (Applicant's Brief, p. 4). Presumably, this means that applicant provides a list of distributors and a link to their websites. Thus, it does not appear on this record that a purchase can be made directly from the webpage or from the information provided in the webpage. In other words, purchasers will have to access the website of a distributor to make a purchase. In effect, the Intellx webpage is simply an advertisement for condoms. In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006) (because applicant's specimen webpage does not provide a means of ordering the product, it is merely informational or promotional material and not acceptable to show trademark use on goods).
  • Case Finding: The prominent display of a mark at a trade show booth where goods (not physically present at the booth) could be ordered was sufficient to establish that the mark was being used at the point of sale.
    • In re Hydron Technologies, Inc., (TTAB 1999).
      • Whether a specimen is merely advertising or whether it is a display associated with the goods is a question of fact which must be determined in each case based on the evidence in that particular case. In re Shipley Co., 230 USPQ 691 (TTAB 1986). In that case, the applicant displayed the mark at booths at trade shows. The crucial factor was that the mark was being used at the point of sale, i.e., at the location where the goods could be ordered, even though the goods identified by the mark were not present when the order was placed. The Board held that the prominent display of the mark on the booth where the goods could be ordered created the association between the mark and the goods.
  • Case Finding: Menus listing ingredients and illustrations of sandwiches were significant for establishing the point-of-sale nature of the menu display.
    • In re Hydron Technologies, Inc., (TTAB 1999).
      • Likewise, the case of In re Marriott, 459 F.2d 525, 173 USPQ 799 (CCPA 1972), dealt with the issue of whether menus can constitute displays associated with the food items listed thereon. In that case, the menus designated a sandwich as the "TEEN TWIST" sandwich, listed its ingredients, and presented an illustration of it as well. The Court found that the point-of-sale nature of the display on the menu was significant because the customer who orders the sandwich from the menu associates the mark on the menu with the sandwich he or she receives.
  • Case Finding: The court noted that a mail-order catalogue is by no means ‘mere advertising' given the point of sale nature of this display, when combined with the prominent display of the alleged mark with the product, leads this court to conclude that this mark constitutes a display associated with the goods.
    • In re Hydron Technologies, Inc., (TTAB 1999).
      • The law with respect to displays associated with the goods was extended by the decision in Lands' End Inc. v. Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1994). There the Court found that a mail-order catalog from which the goods could be ordered, and which showed the mark in close proximity to descriptions of the goods, illustrations thereof and prices for them, was an acceptable specimen because it constituted a display associated with the goods. The court noted that "[t]he catalogue is by no means ‘mere advertising.' A customer can identify a listing and make a decision to purchase by filling out the sales form and sending it in or by calling in a purchase by phone … The point of sale nature of this display, when combined with the prominent display of the alleged mark with the product, leads this court to conclude that this mark constitutes a display associated with the goods." 24 USPQ at 1316.
  • Case Finding: Applicant had many options for using its mark on acceptable specimens related to Compact Discs.
    • In re Settec, Inc., Serial No. 76181456, (TTAB 2006).
      • In order to clarify applicant's position, we note that applicant argues that it is "impracticable" to display this alleged mark "in the ‘traditional' formats specified in 37 C.F.R. § 2.56(b)(1)" (applicant's brief, p. 4) such as "labels, tags, containers or displays associated with the goods," in its dealings, for example, with media publishers and producers and/or compact disc pressing houses. As shown above, the only place the applied-for mark, Alpha- DISC and design comprising a variation on the Greek letter alpha (") appears, is on the back cover of the brochure. Using the exception language of the statute and rules, applicant refers to its specimen of record as "documents associated with the goods or their sale" (applicant's brief, p. 3, emphasis supplied) and "the literature … associated with the goods and their sale to the relevant consumer of the goods." (applicant's brief, p. 6). We find that the facts of the instant case are not analogous to cited situations involving "natural gas, grain that is sold in bulk, or chemicals that are transported only in tanker cars." See TMEP § 904.04. Rather, for reasons it finds compelling, applicant has simply chosen not to use or license its mark for use on finished goods sold to retail consumers. As a result, retail consumers are not among relevant purchasers for goods bearing the mark. Certainly in the context of these goods, we agree that it is not necessary that the ultimate purchaser of a music CD or of a movie DVD knows of this source-indicator.
    • In re Settec, Inc., Serial No. 76181456, (TTAB 2006).
      • Even accepting applicant's logical constraints, it is not "impracticable" for applicant to use this mark with its targeted consumers. For example, in dealing with content providers and their manufacturers, applicant could use this mark within its software products, on tangible media products, on packaging for such tangible media products, or on inserts included with software sent to publishers or discs sent to pressing houses, or even in the form of a "catalogue."4 However, applicant has failed to provide a specimen showing any of these kinds of uses. FOOTNOTE 4 "The specimen of record is in no sense a catalogue in that it does not constitute a means to order goods through the mail using a sales form or a means by which one might call in an order by telephone. Contra Lands' End Inc. v. Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314, 1316 (E.D. Va. 1992) [specimen catalogs acceptable displays associated with the goods]; and In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004) [web page usage of applied-for term functions as a point of sale display]."
    • In re Settec, Inc., Serial No. 76181456, (TTAB 2006).
      • We find that software providers may make products available through downloading or by distributing CD-ROMS. Use of applicant's mark in conjunction with such procedures would clearly qualify as use on the goods. It is not uncommon for a software provider to display its product marks or relevant corporate logos on computerized images created by distributed software, or on the website page where licensed users are given authorized access to the software product. In either of these cases, an applicant would simply submit to the Office a screen-print from the appropriate access screen. Moreover, if applicant actually ships blank, multi-layered CD-ROM's to pressing houses, one could use the mark on inserts associated with the goods, or the shipping labels could easily be designed with applicant's product marks or relevant corporate logos. Hence, based on this entire record, we find that it is not impracticable, in this case, for applicant to have chosen to do any of these things.
  • Case Finding: A website page which displays a product, and provides a means of ordering the product, can constitute a "display associated with the goods," as long as the mark appears on the webpage in a manner in which the mark is associated with the goods.
    • In re Genitope Corporation, Serial No. 76470648, (TTAB 2006).
      • The present fact situation differs from that in the Dell case because applicant's specimen webpage does not provide a means of ordering the product. On the contrary, the webpage states that the study is closed to patient registration. Certainly there is nothing in the specimen which shows that one can "click" on a link to order applicant's product, nor does it explain how to order it. Compare Lands' End Inc. v. Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314, 1316 (E.D. Va. 1992), in which the Court found specimen catalogs to be acceptable displays associated with the goods because "a customer can identify a listing and make a decision to purchase by filling out the sales form and sending it in or by calling in a purchase by phone." At most, applicant's web page indicating how one can obtain "more information on personalized immunotherapy and our product" may be seen as promotional material, but advertising is not acceptable to show trademark use on goods. See Section 45 of the Trademark Act; In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997). Similarly, the company name, address and phone number that appears at the end of the web page indicates only location information about applicant; it does not constitute a means to order goods through the mail or by telephone, in the way that a catalog sales form provides a means for one to fill out a sales form or call in a purchase by phone.
    • In re Genitope Corporation, Serial No. 76470648, (TTAB 2006).
      • If applicant is asserting that the nature of its product precludes it from creating a display associated with the goods that satisfies the requirements of the Trademark Act, as it has been interpreted by case law, then applicant may not be able to rely on a display associated with the goods as its evidence of trademark use, but rather would have to submit evidence of a different manner of use. Applicant's apparent recognition that its webpage does not comply with the requirements for a display associated with the goods only reinforces our own conclusion that it is not acceptable.
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • It appears to us that the Examining Attorney has made the statement that the specimen is mere advertising because of the distinction that is made in the case law between advertising, which does not constitute evidence of trademark use, and a display associated with the goods, which does.
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • "Specimens are invalid for registration purposes only if they constitute mere advertising." Lands' End Inc. v. Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314, 1316 (E.D. Va. 1992), quoting In re Shipley Co., 230 USPQ 691, 694 (TTAB 1986).
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • With respect to the question of whether a website page can constitute a display associated with the goods, it is true, as the Examining Attorney points out, that traditionally "displays associated with the goods" have been banners, shelf-talkers and other point-of-sale material. However, in Lands' End, the Court held that a catalog could also be a display associated with the goods.
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • As the Court reiterated in that decision, citing In re Shipley Co., 230 USPQ at 694 (TTAB 1986), "A point of sale location provides a customer with the opportunity to look to the displayed mark as a means of identifying and distinguishing the source of goods." 24 USPQ2d at 1316.
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • In Shipley, the Board found that a specimen showing the mark at a trade show booth was an acceptable "display associated with the goods" because the trade show booth was a sales counter for the applicant's products, even though the chemicals being sold were not physically present at the booth.
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • The Court found this situation analogous to the catalog involved in Lands' End; the customer could associate this display of the mark with the goods in deciding whether to buy the product. Using the catalog, a customer could associate the product with the trademark in the display, and make a decision to purchase by filling out the sales form and sending it in or by calling in a purchase by phone.
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • Following the reasoning of the Lands' End decision, we hold that a website page which displays a product, and provides a means of ordering the product, can constitute a "display associated with the goods," as long as the mark appears on the webpage in a manner in which the mark is associated with the goods.
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • It is a well-recognized fact of current commercial life that many goods and services are offered for sale on-line, and that on-line sales make up a significant portion of trade.
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • In today's commercial environment, we must recognize that the banners, shelf-talkers and other point of purchase displays that are associated with brick and mortar stores are not feasible for the on-line shopping setting.
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • Web pages which display goods and their trademarks and provide for the on-line ordering of such goods are, in fact, electronic displays which are associated with the goods.
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • In effect, the website is an electronic retail store, and the webpage is a shelf-talker or banner which encourages the consumer to buy the product. A consumer using the link on the webpage to purchase the goods is the equivalent of a consumer seeing a shelf-talker and taking the item to the cashier in a brick and mortar store to purchase it.
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • The single webpage is, thus, a point of sale display, a display by which the actual sale is made.
    • In re Dell Inc., Serial No. 75851765, (TTAB 2004).
      • The Examining Attorney is certainly correct that the trademark QUIETCASE does not appear next to the photograph of the goods. However, as applicant points out, the particular workstation is the only product on the webpage. Thus, it is clear that this is the product to which the trademark QUIETCASE refers.
  • An important function of specimens in a trademark application is, manifestly, to enable the PTO to verify the statements made in the application regarding trademark use. In this regard, the manner in which an applicant has employed the asserted mark, as evidenced by the specimens of record, must be carefully considered in determining whether the asserted mark has been used as a trademark with respect to the goods named in the application.
    • In re wTe Corporation, Serial Nos. 78227268 and 78227272 (TTAB 2008)
      • "An important function of specimens in a trademark application is, manifestly, to enable the PTO to verify the statements made in the application regarding trademark use. In this regard, the manner in which an applicant has employed the asserted mark, as evidenced by the specimens of record, must be carefully considered in determining whether the asserted mark has been used as a trademark with respect to the goods named in the application." In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216 (CCPA 1976) (footnote omitted).
  • Case Finding: Applicant's return address on products that it already made and sold to the customer does not show a connection between the offer of contract processing of metals services and the mark.
    • In re wTe Corporation, Serial Nos. 78227268 and 78227272 (TTAB 2008)
      • The CCPA has made it clear that there must be "some direct association between the offer of services and the mark sought to be registered." Applicant's return address on products that it already made and sold to the customer does not show a connection between the offer of contract processing of metals services and the mark.
  • Case Finding: Applicant's specimen does not show actual service mark use of the mark SPECTRAMET for contract processing of metals using optoelectric and spectrographic sensors to rapidly identify and optionally sort metals and other materials by their chemical composition.
    • In re wTe Corporation, Serial Nos. 78227268 and 78227272 (TTAB 2008)
      • Therefore, we conclude that applicant's specimen does not show actual service mark use of the mark SPECTRAMET for contract processing of metals using optoelectric and spectrographic sensors to rapidly identify and optionally sort metals and other materials by their chemical composition.
  • Even though the specimen may suggest that applicant is providing some type of goods or services, the specimen may fail to establish that applicant is providing the specific service for which it seeks registration.
    • In re wTe Corporation, Serial Nos. 78227268 and 78227272 (TTAB 2008)
      • Similarly, while the specimen may suggest that applicant is providing some type of goods or services, it is not at all clear from applicant's specimen as it was in Metriplex or Eagle Fence that it is providing the specific service for which it seeks registration. See Monograms America Inc., 51 USPQ2d at 1319 ("While these notations might be interpreted as an indication that this is an association or ‘network' of ‘embroidery stores,' there is no indication as to the purpose or activities of this association. There is no reference whatsoever to any type of consultation service, even in the area of monogramming per se, much less in the management of, or advertising for, the stores offering this monogramming").
  • It is important that the specimens support use of the mark in association with the services for which applicant is seeking registration.
    • In re wTe Corporation, Serial Nos. 78227268 and 78227272 (TTAB 2008)
      • It is important that the specimens support use of the mark in association with the services for which applicant is seeking registration.
  • Labels submitted as specimens may not necessarily show use of the mark for the described goods.
    • In re wTe Corporation, Serial Nos. 78227268 and 78227272 (TTAB 2008)
      • In another case involving specimens consisting of labels, the board held that they did not show use in association with custom manufacturing services. In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994) ("[T]he labels submitted as specimens with this application do not show use of the mark sought to be registered as a service mark for the custom manufacture of valves. If the application sought registration as a trademark for these fluid control products, these specimens would clearly be satisfactory, but that is not the issue here"). See also In re Adair, 45 USPQ2d 1211 (TTAB 1997) (Mark TREE ARTS CO. and design may function as a mark for goods but specimen did not show the term used as a mark for the service of designing permanently decorated Christmas trees).
  • The CCPA has made it clear that there must be some direct association between the offer of services and the mark sought to be registered.
    • In re wTe Corporation, Serial Nos. 78227268 and 78227272 (TTAB 2008)
      • The CCPA has made it clear that there must be "some direct association between the offer of services and the mark sought to be registered."
  • The question whether the subject matter of an application for registration functions as a mark is determined by examining the specimens along with any other relevant material submitted by applicant during prosecution of the application.
    • In re wTe Corporation, Serial Nos. 78227268 and 78227272 (TTAB 2008)
      • "The question whether the subject matter of an application for registration functions as a mark is determined by examining the specimens along with any other relevant material submitted by applicant during prosecution of the application." In re The Signal Companies, Inc., 228 USPQ 956, 957 (TTAB 1986).
  • The requirement that a mark must be used in the sale or advertising of services to be registered as a service mark is clear and specific.
    • In re wTe Corporation, Serial Nos. 78227268 and 78227272 (TTAB 2008)
      • "The CCPA has noted that: ""The requirement that a mark must be ""used in the sale or advertising of services"" to be registered as a service mark is clear and specific. We think it is not met by evidence which only shows use of the mark as the name of a process and that the company is in the business of rendering services generally, even though the advertising of the services appears in the same brochure in which the name of the process is used. The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor."" In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973)."
  • There are situations in which the specimens do not contain a reference to the services, but yet are acceptable, since they show direct use of the mark in connection with the rendering of the services.
    • In re wTe Corporation, Serial Nos. 78227268 and 78227272 (TTAB 2008)
      • However, as the board subsequently pointed out: "As was the case in Metriplex, there are situations in which the specimens do not contain a reference to the services, but yet are acceptable, since they show direct use of the mark in connection with the rendering of the services. Here we have no evidence of the rendering of the consultation services." In re Monograms America Inc., 51 USPQ2d 1317, 1319 n.2 (TTAB 1999).
  • There must be some direct association between the offer of services and the mark sought to be registered.
    • In re wTe Corporation, Serial Nos. 78227268 and 78227272 (TTAB 2008)
      • The CCPA has made it clear that there must be "some direct association between the offer of services and the mark sought to be registered." Applicant's return address on products that it already made and sold to the customer does not show a connection between the offer of contract processing of metals services and the mark.
  • Discussion of cases that indicate to show service mark usage, the specimen must show use of the mark in a manner that would be perceived by potential purchasers as identifying the applicant's services and indicating their source via a direct association.
    • In re DSM Pharmaceuticals, Inc., Serial No. 78373640 (TTAB 2008)
      • To show service mark usage, the specimen must show use of the mark in a manner that would be perceived by potential purchasers as identifying the applicant's services and indicating their source via a "direct association." In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) (term that identified only a process held not registrable as service mark, even though applicant was rendering services and the proposed mark appeared in the same brochure in which the services were advertised); In re Moody's Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989) ("Aaa," as used on the specimen, identified the applicant's ratings rather than its rating services and therefore did not function as a mark); Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977) (business progress reports directed to potential investors did not show service mark use for medical services); In re Restonic Corp., 189 USPQ 248 (TTAB 1975) (phrase used merely to advertise goods manufactured and sold by applicant's franchisees did not serve as mark to identify franchising services); In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970) (technical bulletins and data sheets on which mark was used merely to advertise chemicals did not show use as service mark for consulting services).
  • Discussion of cases for 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.
    • In re DSM Pharmaceuticals, Inc., Serial No. 78373640 (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. See In re Int'l Environmental Corp., 230 USPQ 688 (TTAB 1986), in which a survey distributed to potential customers of applicant's heating and air conditioning distributorship services was held to be an acceptable specimen even though it did not specifically refer to the services, where the applicant stated that the sale of its services involved ascertaining the needs of customers serviced, and the record showed that the surveys were directed to potential customers and were the means by which applicant offered its distributorship services to the public. See also In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992)(Board accepted computer screen display as specimen to show sale of computer data transmission services); In re Eagle Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986) (Board accepted photograph of chain link fence as specimen to show alternately colored strands of wire arranged in the fencing); In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984) (Board accepted photograph of costume worn by performer during performance as specimen to show entertainment services).
  • If a mark 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.
    • In re DSM Pharmaceuticals, Inc., Serial No. 78373640 (TTAB 2008)
      • As the examining attorney observed, the term LIQUIDADVANTAGE in this specimen clearly refers to a proprietary software by that name. Nowhere does the specimen show a direct association between use of the proposed LIQUIDADVANTAGE mark and "custom manufacturing of pharmaceuticals featuring liquid fill and finish technology." We note that if a mark 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 Industries, Inc., 203 USPQ 305 (TTAB 1979) (mark registrable where it identified both a waste treatment and disposal service and a chemical solidification process). However, that is not the case here, where every description and explanation of LIQUIDADVANTAGE on the specimen refers to the capabilities and the purported advantages of the LiquidAdvantage software alone. See In re Information Builders Inc., 213 USPQ 593 (TTAB 1982) (Board affirmed refusal to register where mark was used in specimen to refer only to software and not to service for which applicant sought registration); cf. In re Ancor Holdings, 79 USPQ2d 1218 (TTAB 2006) (Board determined that term "tool" in specimen referred to service since applicant did not even offer software). Applicant's submitted specimen does reference "liquid fill and finish capabilities" as a service offered by applicant, but does not directly associate that service with its proposed LIQUIDADVANTAGE mark.
  • If a mark 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.
    • In re DSM Pharmaceuticals, Inc., Serial No. 78373640 (TTAB 2008)
      • We note that if a mark 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 Industries, Inc., 203 USPQ 305 (TTAB 1979) (mark registrable where it identified both a waste treatment and disposal service and a chemical solidification process).
  • Where the mark is used in advertising the services, the specimen must show a direct association between the proposed mark and the services for which registration is sought.
    • In re DSM Pharmaceuticals, Inc., Serial No. 78373640 (TTAB 2008)
      • Where the mark is used in advertising the services, the specimen must show a direct association between the proposed mark and the services for which registration is sought.
  • It is insufficient for an applicant to use the desired mark in connection with the advertisement of a process where applicant seeks to register that mark in connection with a service even though, the brochure may also mention the service apart from the mark.
    • In re DSM Pharmaceuticals, Inc., Serial No. 78373640 (TTAB 2008)
      • As explained by the CCPA in In re Universal Oil Products Co., 177 USPQ at 457, it is insufficient for an applicant to use the desired mark in connection with the advertisement of a process where applicant seeks to register that mark in connection with a service even though, as here, the brochure may also mention the service apart from the mark. In the words of the CCPA: "Direct association is the minimum it must show."
  • Discussion of In re Walker Research, Inc., where the TTAB affirmed the refusal to register where the use of the proposed mark in the specimen clearly referred to a software product rather than to the service for which the applicant sought registration. Importantly, the Board found it irrelevant that the software was used in performance of the identified service.
    • In re DSM Pharmaceuticals, Inc., Serial No. 78373640 (TTAB 2008)
      • This case is analogous to In re Walker Research, Inc., 228 USPQ 691 (TTAB 1986) (term that merely identified computer program used in rendering market analysis services did not function as a mark to identify those services). There the Board affirmed the refusal to register where the use of the proposed mark in the specimen clearly referred to a software product rather than to the service for which the applicant sought registration. Importantly, the Board found it irrelevant that the software was used in performance of the identified service. Without direct association between the service and the proposed mark in the specimen, the Board could not conclude that the service mark was in use.
  • Discussion of cases where a specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage.
    • In re DSM Pharmaceuticals, Inc., Serial No. 78373640 (TTAB 2008)
      • A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage. In re Adair, 45 USPQ2d 1211 (TTAB 1997) (tags affixed to decorated Christmas tree that bear the mark "TREE ARTS CO. and design" and the applicant's location, but make no reference to services, failed to show use for "design services in the nature of designing handcrafted, permanently decorated Christmas and designer trees"); In re Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989) (bumper stickers showing only the mark did not show use to identify "association services, namely promoting the interests of individuals who censor the practice of drinking and driving"); In re Riddle, 225 USPQ 630 (TTAB 1985) (cutouts showing mark with no reference to the services held unacceptable for automotive service center); In re Whataburger Systems, Inc., 209 USPQ 429 (TTAB 1980) (iron-on transfer clothing patches in the form and shape of a cartoon animal mark, distributed as free promotional items to restaurant customers at counters, held insufficient to identify restaurant services).
In re wTe Corporation, Serial Nos. 78227268 and 78227272 (TTAB 2008) In re DSM Pharmaceuticals, Inc., Serial No. 78373640 (TTAB 2008) In re Brian Jay Osterberg, Serial No. 78331176, (TTAB 2007) In re Valenite Inc., Serial No. 76482852, (TTAB 2007) In re Genitope Corporation, Serial No. 76470648, (TTAB 2006) In re Settec, Inc., Serial No. 76181456, (TTAB 2006) In re Dell Inc., Serial No. 75851765, (TTAB 2004) In re Hydron Technologies, Inc., (TTAB 1999) In re Miller Sports, Inc., Serial No. 75/143,020, (TTAB 1999) Grand Total
In re Aerospace Optics Inc., 78 USPQ2d 1861 (TTAB 2006) 1
In re Genitope Corp., 78 USPQ2d 1819 (TTAB 2006) 1
In re Ancor Holdings, 79 USPQ2d 1218 (TTAB 2006) 2
In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004) 4
In re  Hydron Technologies Inc., 51 USPQ2d 1531 (TTAB 1999) 1
In re Monograms America Inc., 51 USPQ2d 1317 (TTAB 1999) 1
In re Brass-Craft Manufacturing Co., 49 USPQ 1849 (TTAB 1998) 2
In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997) 2
In re Adair, 45 USPQ2d 1211 (TTAB 1997) 2
In re Johnson Controls Inc., 33 USPQ2d 1318 (TTAB 1994) 1
Contra Lands' End Inc. v. Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992) 1
In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992) 1
Institut National Des Appellations D'Origine v. Vintners Int'l Co., 958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992) 1
Lands' End Inc. v. Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992) 5
In re Moody's Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989) 1
In re Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989) 1
In re Remington Products Inc., 3 UPSQ2d 1714 (TTAB 1987) 2
In re Eagle Fence Rentals Inc., 231 USPQ 228 (TTAB 1986) 1
In re International Environmental Corp., 230 USPQ 688 (TTAB 1986) 1
In re Shipley Co., 230 USPQ 691 (TTAB 1986) 4
In re Walker Research Inc., 228 USPQ 691 (TTAB 1986)  2
In re The Signal Companies, Inc., 228 USPQ 956 (TTAB 1986) 1
In re Int'l Environmental Corp., 230 USPQ 688 (TTAB 1986) 1
In re Riddle, 225 USPQ 630 (TTAB 1985) 1
In re Red Robin Enterprises Inc., 222 USPQ 911 (TTAB 1984) 1
In re Gilbert Eiseman, P.C., 220 UPSQ 89, 90 (TTAB 1983) 1
In re Royal Viking Line A/S, 216 UPSQ 795 (TTAB 1982) 1
In re Information Builders Inc., 213 USPQ 593 (TTAB 1982) 1
In re Morganroth, 208 USPQ 284 (TTAB 1980) 1
In re Whataburger Systems, Inc., 209 USPQ 429 (TTAB 1980) 1
In re Dun-Donnelley Publishing Corp., 205 USPQ 575 (TTAB 1979) 1
Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305 (TTAB 1979) 1
Intermed Communications Inc. v. Chaney, 197 USPQ 501 (TTAB 1977) 1
In re Bose Corp., 546 F.2d 893, 192 USPQ 213 (CCPA 1976) 1
In re Restonic Corp., 189 USPQ 248 (TTAB 1975) 1
In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (CCPA 1973) 2
In re Marriott, 459 F.2d 525, 173 USPQ 799 (CCPA 1972) 1
In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970) 1
Grand Total 6 17 12 4 3 5 4 3 1 55

Sec. 1051. Application for registration; verification

  1. (a) Application for use of trademark
    1. (1) The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director, and such number of specimens or facsimiles of the mark as used as may be required by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the date of the applicant's first use of the mark, the date of the applicant's first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify that--
      1. (A) the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be the owner of the mark sought to be registered;
      2. (B) to the best of the verifier's knowledge and belief, the facts recited in the application are accurate;
      3. (C) the mark is in use in commerce; and
      4. (D) to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive, except that, in the case of every application claiming concurrent use, the applicant shall--
        1. (i) state exceptions to the claim of exclusive use; and
        2. (ii) shall \\1\\ specify, to the extent of the verifier's knowledge--
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          \\1\\ So in original. The word ``shall'' probably should not appear.
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          1. (I) any concurrent use by others;
          2. (II) the goods on or in connection with which and the areas in which each concurrent use exists;
          3. (III) the periods of each use; and
          4. (IV) the goods and area for which the applicant desires registration.
  2. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  3. (b) Application for bona fide intention to use trademark
    1. (1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to use the mark, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify--
      1. (A) that the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be entitled to use the mark in commerce;
      2. (B) the applicant's bona fide intention to use the mark in commerce;
      3. (C) that, to the best of the verifier's knowledge and belief, the facts recited in the application are accurate; and
      4. (D) that, to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive.
    Except for applications filed pursuant to section 1126 of this title, no mark shall be registered until the applicant has met the requirements of subsections (c) and (d) of this section.
    1. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  4. (c) Amendment of application under subsection (b) to conform to requirements of subsection (a) At any time during examination of an application filed under subsection (b) of this section, an applicant who has made use of the mark in commerce may claim the benefits of such use for purposes of this chapter, by amending his or her application to bring it into conformity with the requirements of subsection (a) of this section.
  5. (d) Verified statement that trademark is used in commerce
    1. (1) Within six months after the date on which the notice of allowance with respect to a mark is issued under section 1063(b)(2) of this title to an applicant under subsection (b) of this section, the applicant shall file in the Patent and Trademark Office, together with such number of specimens or facsimiles of the mark as used in commerce as may be required by the Director and payment of the prescribed fee, a verified statement that the mark is in use in commerce and specifying the date of the applicant's first use of the mark in commerce and those goods or services specified in the notice of allowance on or in connection with which the mark is used in commerce. Subject to examination and acceptance of the statement of use, the mark shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued for those goods or services recited in the statement of use for which the mark is entitled to registration, and notice of registration shall be published in the Official Gazette of the Patent and Trademark Office. Such examination may include an examination of the factors set forth in subsections (a) through (e) of section 1052 of this title. The notice of registration shall specify the goods or services for which the mark is registered.
    2. (2) The Director shall extend, for one additional 6-month period, the time for filing the statement of use under paragraph (1), upon written request of the applicant before the expiration of the 6-month period provided in paragraph (1). In addition to an extension under the preceding sentence, the Director may, upon a showing of good cause by the applicant, further extend the time for filing the statement of use under paragraph (1) for periods aggregating not more than 24 months, pursuant to written request of the applicant made before the expiration of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied by a verified statement that the applicant has a continued bona fide intention to use the mark in commerce and specifying those goods or services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. Any request for an extension under this paragraph shall be accompanied by payment of the prescribed fee. The Director shall issue regulations setting forth guidelines for determining what constitutes good cause for purposes of this paragraph.
    3. (3) The Director shall notify any applicant who files a statement of use of the acceptance or refusal thereof and, if the statement of use is refused, the reasons for the refusal. An applicant may amend the statement of use.
    4. (4) The failure to timely file a verified statement of use under paragraph (1) or an extension request under paragraph (2) shall result in abandonment of the application, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the time for filing may be extended, but for a period not to exceed the period specified in paragraphs (1) and (2) for filing a statement of use.
  6. (e) Designation of resident for service of process and notices
    If the applicant is not domiciled in the United States the applicant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.

 

 

Sec. 1126. International conventions

  1. (a) Register of marks communicated by international bureaus
    The Director shall keep a register of all marks communicated to him by the international bureaus provided for by the conventions for the protection of industrial property, trademarks, trade and commercial names, and the repression of unfair competition to which the United States is or may become a party, and upon the payment of the fees required by such conventions and the fees required in this chapter may place the marks so communicated upon such register. This register shall show a facsimile of the mark or trade or commercial name; the name, citizenship, and address of the registrant; the number, date, and place of the first registration of the mark, including the dates on which application for such registration was filed and granted and the term of such registration; a list of goods or services to which the mark is applied as shown by the registration in the country of origin, and such other data as may be useful concerning the mark. This register shall be a continuation of the register provided in section 1(a) of the Act of March 19, 1920.
  2. (b) Benefits of section to persons whose country of origin is party to convention or treaty
    Any person whose country of origin is a party to any convention or treaty relating to trademarks, trade or commercial names, or the repression of unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the benefits of this section under the conditions expressed herein to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of a mark is otherwise entitled by this chapter.
  3. (c) Prior registration in country of origin; country of origin defined
    No registration of a mark in the United States by a person described in subsection (b) of this section shall be granted until such mark has been registered in the country of origin of the applicant, unless the applicant alleges use in commerce.
    For the purposes of this section, the country of origin of the applicant is the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment the country in which he is domiciled, or if he has not a domicile in any of the countries described in subsection (b) of this section, the country of which he is a national.
  4. (d) Right of priority
    An application for registration of a mark under section 1051, 1053, 1054, or 1091 of this title or under subsection (e) of this section, filed by a person described in subsection (b) of this section who has previously duly filed an application for registration of the same mark in one of the countries described in subsection (b) of this section shall be accorded the same force and effect as would be accorded to the same application if filed in the United States on the same date on which the application was first filed in such foreign country: Provided, That--
    1. (1) the application in the United States is filed within six months from the date on which the application was first filed in the foreign country;
    2. (2) the application conforms as nearly as practicable to the requirements of this chapter, including a statement that the applicant has a bona fide intention to use the mark in commerce;
    3. (3) the rights acquired by third parties before the date of the filing of the first application in the foreign country shall in no way be affected by a registration obtained on an application filed under this subsection;
    4. (4) nothing in this subsection shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country unless the registration is based on use in commerce.
    In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country, instead of the first filed foreign application: Provided, That any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.
  5. (e) Registration on principal or supplemental register; copy of foreign registration
    A mark duly registered in the country of origin of the foreign applicant may be registered on the principal register if eligible, otherwise on the supplemental register in this chapter provided. Such applicant shall submit, within such time period as may be prescribed by the Director, a true copy, a photocopy, a certification, or a certified copy of the registration in the country of origin of the applicant. The application must state the applicant's bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration.
  6. (f) Domestic registration independent of foreign registration
    The registration of a mark under the provisions of subsections (c), (d), and (e) of this section by a person described in subsection (b) of this section shall be independent of the registration in the country of origin and the duration, validity, or transfer in the United States of such registration shall be governed by the provisions of this chapter.
  7. (g) Trade or commercial names of foreign nationals protected without registration
    Trade names or commercial names of persons described in subsection (b) of this section shall be protected without the obligation of filing or registration whether or not they form parts of marks.
  8. (h) Protection of foreign nationals against unfair competition
    Any person designated in subsection (b) of this section as entitled to the benefits and subject to the provisions of this chapter shall be entitled to effective protection against unfair competition, and the remedies provided in this chapter for infringement of marks shall be available so far as they may be appropriate in repressing acts of unfair competition.
  9. (i) Citizens or residents of United States entitled to benefits of section
    Citizens or residents of the United States shall have the same benefits as are granted by this section to persons described in subsection (b) of this section.

 

 

Sec. 1127. Construction and definitions; intent of chapter

In the construction of this chapter, unless the contrary is plainly apparent from the context--
The United States includes and embraces all territory which is under its jurisdiction and control.
The word ``commerce'' means all commerce which may lawfully be regulated by Congress.
The term ``principal register'' refers to the register provided for by sections 1051 to 1072 of this title, and the term ``supplemental register'' refers to the register provided for by sections 1091 to 1096 of this title.
The term ``person'' and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this chapter includes a juristic person as well as a natural person. The term ``juristic person'' includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
The term ``person'' also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The term ``person'' also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The terms ``applicant'' and ``registrant'' embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.
The term ``Director'' means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The term ``related company'' means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
The terms ``trade name'' and ``commercial name'' mean any name used by a person to identify his or her business or vocation. The term ``trademark'' includes any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
The term ``service mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
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.
The term ``certification mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person other than its owner, or
    2. (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter,
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
The term ``collective mark'' means a trademark or service mark--
    1. (1) used by the members of a cooperative, an association, or other collective group or organization, or
    2. (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
and includes marks indicating membership in a union, an association, or other organization.
The term ``mark'' includes any trademark, service mark, collective mark, or certification mark.
The term ``use in commerce'' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce--
    1. (1) on goods when--
      1. (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
      2. (B) the goods are sold or transported in commerce, and
    2. (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
A mark shall be deemed to be ``abandoned'' if either of the following occurs:
    1. (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. ``Use'' of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
    2. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
The term ``colorable imitation'' includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.
The term ``registered mark'' means a mark registered in the United States Patent and Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, or the Act of March 19, 1920. The phrase ``marks registered in the Patent and Trademark Office'' means registered marks.
The term ``Act of March 3, 1881'', ``Act of February 20, 1905'', or ``Act of March 19, 1920'', means the respective Act as amended.
A ``counterfeit'' is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.
The term ``domain name'' means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.
The term ``Internet'' has the meaning given that term in section 230(f)(1) of title 47.
Words used in the singular include the plural and vice versa.
The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.

 

 

Sec. 1141f. Effect of filing a request for extension of protection of an international registration to the United States

  1. (a) Requirement for request for extension of protection
    A request for extension of protection of an international registration to the United States that the International Bureau transmits to the United States Patent and Trademark Office shall be deemed to be properly filed in the United States if such request, when received by the International Bureau, has attached to it a declaration of bona fide intention to use the mark in commerce that is verified by the applicant for, or holder of, the international registration.
  2. (b) Effect of proper filing
    Unless extension of protection is refused under section 1141h of this title, the proper filing of the request for extension of protection under subsection (a) of this section shall constitute constructive use of the mark, conferring the same rights as those specified in section 1057(c) of this title, as of the earliest of the following:
    1. (1) The international registration date, if the request for extension of protection was filed in the international application.
    2. (2) The date of recordal of the request for extension of protection, if the request for extension of protection was made after the international registration date.
    3. (3) The date of priority claimed pursuant to section 1141g of this title.

 

 

C.F.R. Sec. 2.34. Bases for filing.

  1. (a) The application must include one or more of the following five filing bases:
    1. (1) Use in commerce under section 1(a) of the Act. The requirements for an application based on section 1(a) of the Act are:
      1. (i) The trademark owner's verified statement that the mark is in use in commerce on or in connection with the goods or services listed in the application. If the verification is not filed with the initial application, the verified statement must also allege that the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date;
      2. (ii) The date of the applicant's first use of the mark anywhere on or in connection with the goods or services;
      3. (iii) The date of the applicant's first use of the mark in commerce as a trademark or service mark; and
      4. (iv) One specimen showing how the applicant actually uses the mark in commerce.
      5. (v) If more than one item of goods or services is specified in the application, the dates of use required in paragraphs (ii) and (iii) of this section need be for only one of the items specified in each class, provided that the particular item to which the dates apply is designated.
    2. (2) Intent-to-use under section 1(b) of the Act. In an application under section 1(b) of the Act, the applicant must verify that it has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. If the verification is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.
    3. (3) Registration of a mark in a foreign applicant's country of origin under section 44(e) of the Act. The requirements for an application under section 44(e) of the Act are:
      1. (i) The applicant's verified statement that it has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. If the verification is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.
      2. (ii) A true copy, a photocopy, a certification, or a certified copy of a registration in the applicant's country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. The certification or copy of the foreign registration must show the name of the owner, the mark, and the goods or services for which the mark is registered. If the foreign registration is not in the English language, the applicant must submit a translation.
      3. (iii) If the record indicates that the foreign registration will expire before the United States registration will issue, the applicant must submit a true copy, a photocopy, a certification, or a certified copy from the country of origin to establish that the foreign registration has been renewed and will be in force at the time the United States registration will issue. If the foreign registration is not in the English language, the applicant must submit a translation.
      (4) Claim of priority, based upon an earlier-filed foreign application, under section 44(d) of the Act. The requirements for an application under section 44(d) of the Act are:
      1. (i) A claim of priority, filed within six months of the filing date of the foreign application. Before publication or registration on the Supplemental Register, the applicant must either:
        1. (A) Specify the filing date, serial number and country of the first regularly filed foreign application; or
        2. (B) State that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority.
      2. (ii) Include the applicant's verified statement that it has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. If the verification is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.
      3. (iii) Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under section 1(a), section 1(b) or section 44(e) of the Act.
    4. (5) Extension of protection of an international registration under section 66(a) of the Act. In an application under section 66(a) of the Act, the international application or subsequent designation requesting an extension of protection to the United States must contain a signed declaration that meets the requirements of §2.33.
  2. (b)
    1. (1) In an application under section 1 or section 44 of the Act, an applicant may claim more than one basis, provided the applicant satisfies all requirements for the bases claimed. However, the applicant may not claim both sections 1(a) and 1(b) for the identical goods or services in the same application.
    2. (2) In an application under section 1 or section 44 of the Act, if an applicant claims more than one basis, the applicant must list each basis, followed by the goods or services to which that basis applies. If some or all of the goods or services are covered by more than one basis, this must be stated.
    3. (3) A basis under section 66(a) of the Act cannot be combined with any other basis.
  3. (c) The word "commerce" means commerce that Congress may lawfully regulate, as specified in section 45 of the Act.

 

 

C.F.R. Sec. 2.56. Specimens.

  1. (a) An application under section 1(a) of the Act, an amendment to allege use under §2.76, and a statement of use under §2.88 must each include one specimen showing the mark as used on or in connection with the goods, or in the sale or advertising of the services in commerce.
  2. (b)
    1. (1) A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods. The Office may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods, packaging for the goods, or displays associated with the goods.
    2. (2) A service mark specimen must show the mark as actually used in the sale or advertising of the services.
    3. (3) A collective trademark or collective service mark specimen must show how a member uses the mark on the member's goods or in the sale or advertising of the member's services.
    4. (4) A collective membership mark specimen must show use by members to indicate membership in the collective organization.
    5. (5) A certification mark specimen must show how a person other than the owner uses the mark to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of that person's goods or services; or that members of a union or other organization performed the work or labor on the goods or services.
  3. (c) A photocopy or other reproduction of a specimen of the mark as actually used on or in connection with the goods, or in the sale or advertising of the services, is acceptable. However, a photocopy of the drawing required by §2.51 is not a proper specimen.
  4. (d)
    1. (1) The specimen should be flat, and not larger than 81/2inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. If a specimen of this size is not available, the applicant may substitute a suitable photograph or other facsimile.
    2. (2) If the applicant files a specimen exceeding these size requirements (a "bulky specimen"), the Office will create a digital facsimile of the specimen that meets the requirements of the rule ( i.e. , is flat and no larger than 81/2inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long) and put it in the record. The Office may destroy the original bulky specimen.
    3. (3) In the absence of non-bulky alternatives, the Office may accept an audio or video cassette tape recording, CD-ROM, or other appropriate medium.
    4. (4) For a TEAS submission, the specimen must be a digitized image in .jpg or .pdf format.

 

 

C.F.R. Sec. 2.76. Amendment to allege use.

  1. (a) An application under section 1(b) of the Act may be amended to allege use of the mark in commerce under section 1(c) of the Act at any time between the filing of the application and the date the examiner approves the mark for publication. Thereafter, an allegation of use may be submitted only as a statement of use under §2.88 after the issuance of a notice of allowance under section 13(b)(2) of the Act. If an amendment to allege use is filed outside the time period specified in this paragraph, it will be returned to the applicant.
  2. (b) A complete amendment to allege use must include:
    1. (1) A statement that is signed and verified (sworn to) or supported by a declaration under §2.20 by a person properly authorized to sign on behalf of the applicant ( see §2.193(e)(1)) that:
      1. (i) The applicant believes it is the owner of the mark; and
      2. (ii) The mark is in use in commerce, specifying the date of the applicant's first use of the mark and first use of the mark in commerce, and those goods or services specified in the application on or in connection with which the applicant uses the mark in commerce.
    2. (2) One specimen of the mark as actually used in commerce. See §2.56 for the requirements for specimens; and
    3. (3) The fee per class required by §2.6.
  3. (c) An amendment to allege use may be filed only when the applicant has made use of the mark in commerce on or in connection with all of the goods or services, as specified in the application, for which applicant will seek registration in that application unless the amendment to allege use is accompanied by a request in accordance with §2.87 to divide out from the application the goods or services to which the amendment pertains. If more than one item of goods or services is specified in the amendment to allege use, the dates of use required in paragraph (b)(1) of this section need be for only one of the items specified in each class, provided the particular item to which the dates apply is designated.
  4. (d) The title "Allegation of Use" should appear at the top of the document.
  5. (e) The Office will review a timely filed amendment to allege use to determine whether it meets the following minimum requirements:
    1. (1) The fee prescribed in §2.6;
    2. (2) One specimen or facsimile of the mark as used in commerce; and
    3. (3) A statement that is signed and verified (sworn to) or supported by a declaration under §2.20 by a person properly authorized to sign on behalf of the applicant that the mark is in use in commerce.
  6. (f) A timely filed amendment to allege use which meets the minimum requirements specified in paragraph (e) of this section will be examined in accordance with §§2.61 through 2.69. If, as a result of the examination of the amendment to allege use, applicant is found not entitled to registration for any reason not previously stated, applicant will be so notified and advised of the reasons and of any formal requirements or refusals. The notification shall restate or incorporate by reference all unresolved refusals or requirements previously stated. The amendment to allege use may be amended in accordance with §§2.59 and 2.71 through 2.75. If the amendment to allege use is acceptable in all respects, the applicant will be notified of its acceptance. The filing of such an amendment shall not constitute a response to any outstanding action by the Trademark Examining Attorney.
  7. (g) If the amendment to allege use is filed within the permitted time period but does not meet the minimum requirements specified in paragraph (e) of this section, applicant will be notified of the deficiency. The deficiency may be corrected provided the mark has not been approved for publication. If an acceptable amendment to correct the deficiency is not filed prior to approval of the mark for publication, the amendment will not be examined.
  8. (h) An amendment to allege use may be withdrawn for any reason prior to approval of a mark for publication.
  9. (i) If the applicant does not file the amendment to allege use within a reasonable time after it is signed, the Office may require a substitute verification or declaration under §2.20 stating that the mark is still in use in commerce.
  10. (j) For the requirements for a multiple class application, see §2.86.

 

 

C.F.R. Sec. 2.88. Filing statement of use after notice of allowance.

  1. (a) In an application under section 1(b) of the Act, a statement of use, required under section 1(d) of the Act, must be filed within six months after issuance of a notice of allowance under section 13(b)(2) of the Act, or within an extension of time granted under §2.89. A statement of use that is filed prior to issuance of a notice of allowance is premature, will not be considered, and will be returned to the applicant.
  2. (b) A complete statement of use must include:
    1. (1) A statement that is signed and verified (sworn to) or supported by a declaration under §2.20 by a person properly authorized to sign on behalf of the applicant ( see §2.193(e)(1)) that:
      1. (i) The applicant believes it is the owner of the mark; and
      2. (ii) The mark is in use in commerce, specifying the date of the applicant's first use of the mark and first use of the mark in commerce on or in connection with the goods or services identified in the notice of allowance, and setting forth or incorporating by reference those goods/services identified in the notice of allowance on or in connection with which the mark is in use in commerce. Where an applicant claims section 1(a) of the Act for some goods/services in a class and section 1(b) of the Act for other goods/services in the same class, the statement of use must include dates for the section 1(b) of the Act goods/services;
    2. (2) One specimen of the mark as actually used in commerce. See §2.56 for the requirements for specimens; and
    3. (3) The fee per class required by §2.6. The applicant must pay a filing fee sufficient to cover at least one class within the statutory time for filing the statement of use, or the application will be abandoned. If the applicant submits a fee insufficient to cover all the classes in a multiple-class application, the applicant must specify the classes to be abandoned. If the applicant submits a fee sufficient to pay for at least one class, but insufficient to cover all the classes, and the applicant has not specified the class(es) to be abandoned, the Office will issue a notice granting the applicant additional time to submit the fee(s) for the remaining class(es), or specify the class(es) to be abandoned. If the applicant does not submit the required fee(s) or specify the class(es) to be abandoned within the set time period, the Office will apply the fees paid, beginning with the lowest numbered class(es), in ascending order. The Office will delete the goods/services in the remaining class(es) not covered by the fees submitted.
  3. (c) The statement of use may be filed only when the applicant has made use of the mark in commerce on or in connection with all of the goods or services, as specified in the notice of allowance, for which applicant will seek registration in that application, unless the statement of use is accompanied by a request in accordance with §2.87 to divide out from the application the goods or services to which the statement of use pertains. If more than one item of goods or services is specified in the statement of use, the dates of use required in paragraph (b)(1) of this section need be for only one of the items specified in each class, provided the particular item to which the dates apply is designated.
  4. (d) The title "Allegation of Use" should appear at the top of the first page of the document.
  5. (e) The Office will review a timely filed statement of use to determine whether it meets the following minimum requirements:
    1. (1) The fee for at least a single class, required by §2.6;
    2. (2) One specimen of the mark as used in commerce;
    3. (3) A statement that is signed and verified (sworn to) or supported by a declaration under §2.20 by a person properly authorized to sign on behalf of the applicant that the mark is in use in commerce. If the verification or declaration is unsigned or signed by the wrong party, the applicant must submit a substitute verification on or before the statutory deadline for filing the statement of use.
  6. (f) A timely filed statement of use which meets the minimum requirements specified in paragraph (e) of this section will be examined in accordance with §§2.61 through 2.69. If, as a result of the examination of the statement of use, applicant is found not entitled to registration, applicant will be notified and advised of the reasons and of any formal requirements or refusals. The statement of use may be amended in accordance with §§2.59 and 2.71 through 2.75. If the statement of use is acceptable in all respects, the applicant will be notified of its acceptance.
  7. (g) If the statement of use does not meet the minimum requirements specified in paragraph (e) of this section, applicant will be notified of the deficiency. If the time permitted for applicant to file a statement of use has not expired, applicant may correct the deficiency. After the filing of a statement of use during a permitted time period for such filing, the applicant may not withdraw the statement to return to the previous status of awaiting submission of a statement of use, regardless of whether it is in compliance with paragraph (e) of this section.
  8. (h) The failure to timely file a statement of use which meets the minimum requirements specified in paragraph (e) of this section shall result in the abandonment of the application.
  9. (i)
    1. (1) The goods or services specified in a statement of use must conform to those goods or services identified in the notice of allowance. An applicant may specify the goods or services by stating "those goods or services identified in the notice of allowance" or, if appropriate, "those goods or services identified in the notice of allowance except * * *" followed by an identification of the goods or services to be deleted.
    2. (2) If any goods or services specified in the notice of allowance are omitted from the identification of goods or services in the statement of use, the Office will delete the omitted goods/services from the application. The applicant may not thereafter reinsert these goods/services.
    3. (3) The statement of use may be accompanied by a separate request to amend the identification of goods or services in the application, as stated in the notice of allowance, in accordance with §2.71(a).
  10. (j) The statement of use may be accompanied by a separate request to amend the drawing in the application, in accordance with §§2.51 and 2.72.
  11. (k) If the statement of use is not filed within a reasonable time after the date it is signed, the Office may require a substitute verification or declaration under §2.20 stating that the mark is still in use in commerce.
  12. (l) For the requirements for a multiple class application, see §2.86.