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Trademarks, Service Marks and Adequate Specimen

Friday, 6 November 2015

by Seth Gomm, JD MBA

The Lanham Act [1] governs trademarks in the United States and affords nationwide protection against infringement for marks registered on the Principal Register [2]. The USPTO is responsible for administering the registration of trademarks. In order to receive protection, the mark must be used in commerce, associated with a particular class of goods or services, distinctive, and not be confusingly similar to any other registered mark. A specimen (or sample) of the mark in use must be submitted with the application. Two different types of marks may be registered with the USPTO:

• A trademark is a word, phrase, symbol, or design, or a combination of words, symbols or designs, that identifies and distinguishes the sources of goods of one party from those of others.

o For trademarks, a proper specimen shows the mark on the actual goods or packaging for the goods (such as tags, labels, a container for the goods, a display associated with the goods or a photograph of the goods that shows use of the mark on the goods). Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, letterhead and business cards generally are not acceptable specimens for goods.

• A service mark is the same as a trademark, except that it identifies the source of a service rather than a product. The following criteria have evolved for determining what constitutes a service: (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.

o For service marks, a specimen for a mark must show the mark used in the sale or advertising for the services (such as a sign; a brochure about the services; an advertisement for the services; a business card or stationery showing the mark in connection with the services; or a photograph showing the mark as used in rendering or advertising the services). There must be some reference to the type of services rendered on the specimen, i.e., not just a display of the mark itself. For example, if the mark sought to be registered is “XYZ,” a business card that only shows the mark “XYZ” would not be acceptable. A business card that states “XYZ REAL ESTATE” would be acceptable.

A trade name is the name of the business – it cannot be registered with the USPTO. A standard character mark is a word or phrase that is used in plain block letters. Registration of the mark in plain block letters focuses on the mark as a word or phrase, and it encompasses all reasonable presentations (including designs) in which it could be depicted. A stylized character mark is a word or phrase which uses distinctive lettering; a symbol; a design; or a combination thereof (like a logo).

Notably, the same word may be used as a trademark, a service mark and a trade name. For example, Xerox is the trade name of a company. When used to designate its copiers, it is a trademark. When used to designate its copying service, it is a service mark.

When a trademark or service mark is federally registered, it is proper to use the encircled ® symbol. It is desirable to use the symbol at least once on each label, tag or box bearing a federally registered mark, provided that the mark is being used to designate goods or services encompassed by the registration. At all other times it is proper (but not mandatory) to use a TM symbol to designate a trademark, and a SM symbol to designate a service mark. It is not necessary to use any symbol to designate a trade name.

[1]15 U.S.C. § 1051 et. seq.

[2]The registration on the Principal Register affords the most protection under federal trademark law. However, if a mark is not inherently distinctive or is merely descriptive and has yet to acquire a secondary meaning, the mark may be registered on the “Supplemental Register” as opposed to the Principal Register. Registration on the Supplemental Register allows a registrant to bring an infringement action in federal court and provides protection for the mark against subsequently-filed application for a similar mark. In addition, the registrant can subsequently apply to have the mark registered on the Principal Register by showing that the mark has acquired a “secondary meaning” - usually after the mark has been in use for five years. Notably, there is no “intent to use” application for registration on the Supplemental Register.

This information is made available by Spaulding Law for educational purposes only and not to provide legal advice. By using this website, you understand that there is no attorney-client relationship between you and Spaulding Law, unless you have entered into a separate representation agreement. This information should not be used as a substitute for competent legal advice from a licensed professional attorney.

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