Good afternoon thank you all for attending today's presentation at trademark specimens
overview for experienced filers a link to today's slides was included in the email you received
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tm_webinar@USPTO.gov there will be time for answers from the presenters at the end of
the session if you are watching a recording of this presentation please email your questions to
tmpolicy@uspto.gov our presenters for today's webinar are Mark rodemaker a legal policy
staff attorney and Renee cervantes a managing attorney and now i'll turn it over to Renee
Good afternoon everyone welcome to our discussion on specimens we're very glad to have you today um
throughout this presentation you're going to have an opportunity to interact with us through a few
polls where you're going to step into the role as the examining attorney so to get us ready we're
going to open up a little icebreaker poll for you you need to look to the right side of your screen
look for a set of blue bar graphs with an asterisk next to them click on that
and that should open up a poll for you that asks you some questions about the pandemic and how you
are faring with those so we're going to give you about 30 seconds
to uh to respond to that poll so we can make sure everybody knows how to do that
okay this is your 10 second warning
before we close the poll
okay we're going to go ahead and close that poll now now as i said um we're going to have you all
interacting some with us today so hope that you will find it helpful and instructive um i am a
managing attorney and i have been with the office for almost 15 years and i'm one of those folks who
supervises the examining attorneys that you work with i'm going to also introduce my partner today
mark rodemaker mark good afternoon everybody thanks for attending um
i'm glad you're all here can we go to the next slide please
so why are specimens so important it's because the uspto needs to evaluate these specimens
to make sure that whatever mark registers reflects how mark is used in the marketplace
next slide now i'm not going to talk about using commerce uh in depth
instead i'm going to next slide just take a time out to talk about the fact that use in commerce
is something that you need to show during the lifetime of a registration even after it registers
in order to maintain your registration you're going to need to show
use and commerce at various points during its lifetime and you'll need to provide specimens
now there's a limited exception for excusable non-use
during the maintenance filing periods and that's for non-use due to special
circumstances that are beyond the owner's control or forced by outside causes
19 the pandemic may be a special circumstance excusing non-use the key is that like any other
special circumstance there needs to be an explanation of how that special circumstance
actually forced non-use of the mark for the goods and services it's not probably enough to just say
covet 19 forced us to stop using the mark with the goods and services you have to connect the dots
between how covert 19 forced non-use of the mark in addition to that explanation of the special
circumstances you're going to need to provide us the date non-use began or you stopped and the date
when use will resume as well as an explanation of any steps being taken to resume use next slide
so i'm not going to go into detail about using commerce because i think you're
all familiar with that at this point next slide um next slide
i'm going to turn it over to renee instead to talk about acceptable specimens for goods renee
okay so when you um when you submit a specimen for goods you basically have two options
um the most uh most specimens will actually show the mark on the goods next slide
next slide so if you look at this this false graph mark on the bottom of this cup
this is the type of uh specimen that will always show uh specific and and and appropriate use
for goods now um you can also give us a tag or a label for the goods next slide please
oh before i say that though let me talk about
when you give us specimens if you look carefully at this particular specimen this is for bottles of
ink would be acceptable but it's only acceptable because the label is completely visible in the
middle if you look at the two bottles on the outside if those were the specimens we would not
be able to take that because the entire mark needs to be visible on the specimen next slide please
now so i got a little ahead of myself unattached labels and tags are also acceptable however
they need to have sufficient product information so that we
can see that there is a um first of all that we can tell that it is
in commerce but also so that we can see that nexus between
the goods that they are purporting to show use for next slide please
so this is an example of an acceptable label
you'll notice that the mark is moon time t over on the left you'll see that
throughout this particular specimen there are various different types of information that
would typically be included on an actual label for example there's the pricing barcode information
there's a nutritional information there's also an indication that the goods are organic we look for
these types of information and criteria when we have unattached labels next slide please
this is an example of an unacceptable tag this lacks all of that information and essentially
is no different than either a printer's proof or a rendering of the mark next slide please
now the other option you have for a specimen for goods is you can have a display they come in two
types physical displays and electronic displays so as to the physical display
we're literally talking about you taking a a picture of the goods for sale when they're
set up in either a window shop or in some other manner there are other types of displays that are
described in more detail in the tmep but the main thing is that it needs to show
use of the goods at the point of sale next slide please electronic displays are very similar
so our catalogs however we look for the three things you see on the slide and if any of them are
missing we will usually have to issue a refusal and a requirement for a substitute specimen
next slide so if you look at this particular example first click please you will see
that we have a picture or description of the goods through the eyeglasses and there's a description
of the eyeglasses either works next click you will see the mark clearly associated with the goods
next click please and you will see up at the upper right hand corner the shopping bag which
is indicating that the goods are for sale on that particular website that's really key next slide
because that particular factor i would say is a very common reason why we cannot take
website evidence for goods because as you all know we cannot take advertising for goods and if you
don't have something like one of these types of indications on your website specimen the specimen
most of the time will fail as advertising for goods next slide please
now specimens for components or ingredients are a special type of specimen
there is a distinction between a component and a finished product so let me give you an example
if you think of a computer chip that is only sold inside of computer hardware such as the intel
chip that's an example of a component type of good where you would have to show
use on that component if you give us a specimen just showing that
mark associated with the hardware it fails to show proper use in comp and commerce it has to show
the component part being the goods rather than the finished product another example would be clothing
if a your client for example produces particular fibers or particular fabrics that she used to make
the clothing and markets it under a specific trademark that specimen absolutely must show
not the finished clothing associated with the mark but fiber inside the clothing associated
with the mark next slide please just a reminder advertisements for goods almost always is going
to be refused there are some exceptions for example there are some specialized goods where
specimens like brochures are used at the point of sale to associate the product
if you're going to give us something like that you need to provide some kind of an explanation
as to how that brochure is being used at the point of sale don't assume just because
we will theoretically take a brochure as a specimen for goods that all brochures for
specimens are acceptable next slide please now we're going to open up a poll here
as we're opening up the poll and remember the way that you uh will access the polls
is you will look at the left hand of your the right hand of your screen for the bar graph and
click on it once you see that little asterisk show up i want you to look at this particular specimen
and if you were an examining attorney i want you to indicate in the poll whether or not
you would refuse this specimen not similar to the one we saw but look at it very carefully
and remember those three factors that are required
for an online specimen for goods we're going to give you about 20 seconds
okay we're gonna give you a 10 second warning at this point
okay we're going to close the pole at this point and you'll get a chance to see the results
now hopefully next click
you said no the reason is if you look very carefully there is no means for ordering the goods
here you do see the other two factors you see the mark and you see a textural description of the
goods but if you look carefully at this particular example you are not going to find that there is a
way to purchase the goods so this would be refused as advertising for goods it looks like most of
us caught that so excellent job on your first day as an examining attorney next slide please
all right so at this point i'm going to turn you over to my partner crime mark
thanks renee so what about services so specimens for services are a little less
rigid than specimens for goods there are basically two flavors here there's the most common type of
specimen for services which is advertising which renee just talked about not being acceptable for
goods generally speaking um advertising is a perfectly good specimen for services another
type or another flavor of specimen for services is a rendering type specimen or a specimen that shows
the mark in the context of the service activity actually being performed next slide please
so in either case there has to be this direct association between the
mark and the services in the application or the registration in consumers minds next slide please
for advertising generally that means there's going to have to be some sort of reference
to the services in the advertising and then the mark has to be used to identify
the services listed in the in the id of the application next slide please
for rendering we might not necessarily see an explicit reference to the services um instead
we can infer from the context or environment that the services are being performed and the
mark is appearing in that context now one caveat with this is that if you do submit a specimen
that doesn't have reference to the services and you're thinking oh this is a rendering
type specimen if it's not clear to the examining attorney you're probably going to get a refusal
so this is an opportunity for you to in the maybe specimen description to give
as much context to the specimen as possible to enable the examining attorney to confidently
make a decision as to whether it's an acceptable rendering specimen next slide please so here's
down pat a perfect example of an advertising specimen for services you'll see this is a
web page it's the mark is urban law furnishings the services are online retail store services
featuring furniture and you'll see that there's the mark on the top of the page and then in the
who we are section there's a description of the services as being a trend setting online furniture
store so there's a reference to the service there's the mark appearing there and there's
a direct association between the two next slide please now here's an unacceptable specimen because
we don't have enough of a description of the services in the in the specimen itself to give us
enough idea of what services are being performed under the mark although you don't necessarily have
to spell out what the services are word word for word in the specimen there has to be enough there
that it's not left completely to the imagination as to what the services are being provided are
here the mark is iobit and then we'll reproduce the description in the purple box in the next
slide next slide and this is for computer programming services maintenance of computer
software uh research and development and computer saw in the field of computer software and a host
of other software related services that box that we just saw doesn't have enough of a reference to
the type of service to make it acceptable for the service mark they say we also promise that we'll
keep providing first-class free software and uh and online service for personal or commercial
use or non-commercial use there's a reference to software there they're providing software somehow
but the online service were completely in the dark as to what that might be similarly in the second
paragraph they talk about being a windows system service provider again we don't know what type of
service provider they are here so this was found to be an unacceptable specimen for these services
next slide please so what about signage signage can be a great specimen for services um
just be careful that there be enough there to reference the service in addition to the mark
the case i'm referring to here is in ray republic national llc where the service provider provided
a specimen that just simply reproduced the mark on the door to the offices of the applicant there was
no reference to the service and as a result the board found that the specimen was unacceptable
next slide please so what about software specimens
the uspto makes this distinction between software as a service and software isn't good
and you're going to have to identify your software in one of the two ways effective january 2019
even though the consumer may not care whether they're being provided the software as a
service or software as a good the pto makes that distinction between the good and service and the
types of specimens which are acceptable for a good may not be acceptable for services and vice versa
so for goods you can software as goods um
specimens can be any of the traditional types of good specimens packaging
record the mark on the recording itself these are less common these days um so you might want
to show the mark on the display screen for the software or a screenshot of the software running
if it's downloadable software again you'll have to show that it's there's an association between
the mark and the software and that there's a means to purchase or download the software
next slide so a means to purchase or download means just that it can't be something that
leads to a purchase it has to be a means to actually purchase their download
for example in in-rate pure storage inc a requested demo button was found insufficient
to be an acceptable specimen for software downloadable software because requested demo
generally says generally indicates that the owner or the consumer is going to experience
the software but not necessarily purchase it the purchase will happen somewhere downstream of the
demo so this was an unacceptable specimen for downloadable software or yeah next slide please
here's an acceptable specimen for downloadable software click you can see the mark portal
next line please you can see the mark portal click at the top of the specimen and you can
also see the means to download the little cloud icon click there on the screenshot from the phone
this is a perfectly acceptable specimen for downloadable software
next slide please now we're going to take a timeout and put you in the shoes of the
examining attorney again and open a poll to see why you would refuse this specimen um
let me know why you would refuse it or if you would refuse it at all
the mark is botnet it's for downloadable computer game software and the specimen is
described as a website used in commerce i'll give you a few seconds to complete the poll
okay i'll give you a 10 second warning
and we'll close the poll
and see what the results were um
if you look at the specimen closely you'll see the mark you'll see a description of the software
you'll see even screenshots of the software so the mark is there there's an association between the
goods the downloadable game software and the mark however in this case there's no means to download
so if you answered no means to download or purchase we agree with you
next slide please so what about user manuals for software user manuals under the ultra flight case
can be acceptable for software um the only thing to be careful is that it's actually a user manual
for software and not another type of manual that has another purpose other than to show how how to
use the software the case on this is in-rate user first next slide please here the
applicant submitted a pdf instruction manual with the mark user first placed on the cover
and the board found that this was not an acceptable specimen for software because
this specimen referred to certification training lab
which kind of raised the question as to whether this was an actual user manual for software
next slide please
so what about online non-downloadable software specimens um just like any other service specimen
you have to show a direct association between the mark and the services in consumers minds
so it's just like any other type of service mark specimen next slide please however you might want
to keep in mind that because we know that a login screen isn't is a it's a way that online software
is accessed will accept a login screen without necessarily a complete textual description of what
the software is it's helpful but it's unnecessary so online non-downloadable software specimen could
be acceptable as just a login screen the next slide please here's an example of that you can
see the mark in the upper left hand corner click please and you can see the fields for logging in
to the online non-downloadable software in the center right of the of the screen click please
this is perfectly acceptable for online non-downloadable software even though there
isn't necessarily a textual description of what the software is doing because
this is a generally recognized way to access online non-downloadable software next slide
so what about services um that are being provided through software
versus just providing the software itself it's hard to make that distinction sometimes and the
way we think about it is if the applicant or owner is performing the service activity
through the software the software's performing that activity for the consumer then likely
the specimen will be acceptable for services but if the user if the user or consumer is performing
that activity themselves then it's likely going to be a specimen that's acceptable for
software let's look at an example of that next slide first click the mark here is curb karma
and it's an app but the services you can see here are actually a server service not the app
and it's for online parking spot matching and here the screenshots for the
uh the app which are shown in the bottom right corner click show that the app itself is making
the matches is showing the consumer where the parking spots are so here the software
is performing that service activity matching and not the consumer so this is an acceptable
specimen for the services of online matching of parking space with consumers next slide please
so what about social media specimens social media specimens are just like any other specimen so you
have to um make sure they meet the requirements for good specimens if if this specimen is for
goods or service specimens if the specimen is for services the one thing to kind of tread lightly
around or be careful of is that you're not is to be careful of whether or not you're actually
providing the social networking service in many cases the applicant or owner is probably not
providing the social networking service they're probably providing some other service that's
being advertised through the social networking service and the case on point here is in rayford
forest trans world delivery there's ftd had a mark state your way for creating an online
community of registered users to engage in social networking and they provided as their specimen
printouts from their twitter web pages or yeah twitter pages and it showed ftd interacting with
its consumers on twitter but this was not enough to show that ftd was actually providing the social
networking service itself the board found that although they were taking advantage of the forum
to social network ftd wasn't providing the forum or the means to social network uh
in the specimens it was twitter that was providing the forum not ftd next slide please
so here's a good example of a social media type specimen notice it's not for social media it's for
fast food restaurant services click and the mark is sam burgers and you can see that in the left
side of the facebook page and it's for restaurants and you can see a reference to the restaurants
on the bottom of the page click um and so you have the mark and a reference to the services
an association between the mark and the services and this is a perfectly acceptable specimen for
restaurants next slide please that is to say that social media specimens would never be
good for goods um there there are cases where you can actually purchase things
within a social media post for example twitter has a buy button on some of its tweets that
allow purchases to be made within the tweet again this has to meet the requirements for any kind of
electronic display for goods it has to contain a picture or textual description of the goods it has
to show the mark in association with the goods and there has to be that means for ordering or
purchasing the goods which is usually where people get tripped up now i'm going to switch gears
and turn it over to renee who's going to talk about specimens that are not in use in commerce
okay so um next slide please there are basically three categories of specimens that we see that are
not in use in commerce they are either digitally created drawings of the goods rather than
images of the actual goods themselves or they are digitally altered where
an existing image has been altered using some type of editing software
to append a different trademark onto an existing product generally an existing third party product
and then there are mock-ups mock-ups are generally non-digital but it's generally a situation where
someone creates either stickers or labels that are used to simply submit with the application
in all cases though uh when the if these goods are actually not in use goods or services
are actually not in use in commerce they're going to draw a refusal next slide please so
fake specimens are a problem because they affect the integrity of our registry and they also
can reach over to uh constituting fraud on the office so you're going to want to pay close
attention to the specimens that your clients give to you and make sure that you don't allow
them to file anything that falls into any of these categories now don't worry we're going
to give you plenty of examples and you're going to have a chance to interact with some polls to
practice being able to spot these next slide please
all right now if an examining attorney sees um any instances or red flags of a specimen
that's not in use in commerce they're going to refuse it and they're also going to issue
a request for information the purpose is to understand more about how these uh products
it's usually products but can also be services how these goods or services are sold in commerce
if that's true and to also allow for correction of the faulty specimen next slide please
if you get an rfi you need to do your best to answer it
as completely and make sure it's accurate as you can if you can't answer certain things
you need to indicate that in the in your response next slide please
now of course you can always respond by amending your filing bases to a non-use-based
filing basis um and or you can of course give us a second substitute specimen next slide please
now some of the things the examining attorney going to look for it's a long list
so the next two slides are going to show you some of the things that we look for to give
us a tip-off that we may be dealing with a specimen that's not in use in commerce
overall i'm going to summarize these rather than read them all to you overall we look for anomalies
on that specimen we look to see are there particular areas of specimen where the coloring is
inconsistent where the stylistic criteria of the lettering is different we look for areas that are
blurred or unusually sharp next slide please we look for areas that have different textures on the
um on the image and we tend we also typically do reverse image searching online so that we can find
if a mark has been um simply uh attached to an existing third-party product in any of those cases
it's likely that the examining attorney is going to refuse that as a digitally created or mock-up
specimen next slide please all right so i promised you some examples you're going to get plenty of
uh of uh practice with that we're going to open up a new poll and next slide
now don't respond to the poll until i tell you to i'm going to go over an example first now
if you look at this particular set of specimens you see an example of an unacceptable specimen
and an acceptable specimen on the left hand side is unacceptable because
it is clearly not product packaging this is a two-dimensional drawing
of the mark it is not acceptable as a label because it lacks any of those
other criteria or information about the product that would be expected on a label so the
specimen to your left would be refused however if you look on your right we see the actual box that
the wine glasses are are packed inside so we have an example of actual packaging and we can tell
it's a three-dimensional box from the image we can see additional information that would be typical
on packaging so we would accept the specimen on the right we would not accept the specimen
on the left which amounts to little more than a drawing or rendering of the mark next slide please
this is an example of two specimens neither of which are acceptable because these are specimens
that were created digitally on a computer these are not actual shirts and so when we see something
like that we are not able to accept this because this is clearly not the product itself and it
is not the way that that product would be encountered in commerce by actual consumers
so be very careful some of these drawings can be quite realistic and in no case is a drawing
of the product with the mark on the product and an acceptable specimen next slide please
this one should be obvious this is an example of a digitally altered specimen
if you look at the actual product on your right hand side you will see the actual correct
take trademark but you look to your left and you can see a specimen where the applicant has simply
edited the image file of the third party product and added their mark to a third party product this
is the type of evidence that we typically will uncover when we do our reverse image searching
this would not be an acceptable specimen next slide please
these are examples of the mock-ups that i talked about mock-ups think of it as think of a mock-up
as a a bunch of made-up specimens that you just create so you can submit your application the
giveaways on these is that they would typically just be plain labels that are taped to products
they would typically um have we will oftentimes see in copens different marks with the same types
of labels on on all of the uh the different products this is a type of situation where you
would if if if it turned out that your client and the unlikely event actually does uh market
it this way you would need to you would need to explain that very carefully in your request to
your rfi however in most cases we would not accept specimens that look like this next slide please
now it's time for you to be an examining attorney um i would like for you to examine
the specimen very carefully and think about the tip-offs that i talked about so look
and see if you see any of those anomalies in this specimen and we're going to open up our
poll and if you see anything that you think indicates that this is either digitally created
or digitally altered or mock-up you should select no but if you don't see any of that evidence
you should select yes so we're going to give you about 20 seconds
10 second warning
okay we're going to go ahead and close this poll
and hopefully if you're the examining attorney you would take this specimen
now the things that the examining attorney would be noticing it looks like and it looks
like a lot of you would not take this specimen all right well that's that's actually very good
um that that opens up the discussion now i'm going to tell you why you would take this specimen
if you look very very carefully at the label look at the stylization of the letters you'll see that
it's consistent they're not a whole bunch of different fonts you don't see odd color sticking
out you also see the marks in the places on the product that you would expect a mark to
to show up because that's another tip off when we see marks that are displayed in non-traditional
fashions that's usually a dead giveaway that specimen has been digitally altered or digitally
created if you also look at the relative sizes of the different marks on here you can certainly see
marks and sub marks and the heel different mark is down at the bottom where you would typically
find a tag line or a secondary trademark so this would actually be an acceptable specimen okay next
slide now we're going to open up another poll for you we want you to look at this particular
specimen for golf shoes the mark is stealth keeping in mind the factors and tip-offs that i've
discussed with you today would you refuse or which you allow
i'm going to give you about 15 seconds
all right five second warning
okay we're gonna close this poll at this point and hopefully if you're all good examining attorneys
you would never accept this specimen the reason is is that there are a number of anomalies on the
specimen that would lead you to believe that this is a specimen that's not in use in commerce the
the the most obvious is the way that the mark is placed on the shoe it's in a very unusual
manner um shoe marks typically do not have the mark on the side of the shoe they certainly are
not crooked and if you look very closely at the lettering of the word stealth you're going to see
quite a lot of blurriness or pixelation of the lettering there that pixelation is a pretty
is a dead giveaway that there's probably two files superimposed on each other and that there's noise
around where the wording has been added to an existing image so this is an example of a specimen
that we would not accept next slide now we're going to open another poll and give you a chance
to look at yet another specimen i'm going to give you just about 15 seconds on this one as well
five second warning
okay so we're going to close this poll out and i can't wait to see the exact the
results of this one hopefully no one would take this specimen as well but this one is not as
as a clear cut as it looks at first so some of those of you who would not refuse i can
kind of understand why you might not refuse it however the two arrows show where the mark is the
place it might the placement on the specimen is unusual you typically will never see
a mark on the actual end of the flatware you usually see it if anywhere
on the somewhere on the on the stem or on the handle but now even though the
mark appears on the handle here if you look at it carefully it's actually upside down
and that's unusual and that is consistent with uh applying a file on top of an existing picture
of a fork so at a minimum the examining attorney would refuse this with a request for information
most likely the best course of action here would be to give a new specimen next slide please
all right one more poll for you so we're going to open that up and what i'm going to ask you to do
is look at this it should be familiar to you and the mark is healed different again for supplements
and
think about why you would explain to the applicant if you would refuse and think about why you would
allow this specimen if you would not refuse we're going to give you 15 seconds on this one
five second warning
okay we're going to close this poll so you can see the results
now i want you to think about anomalies and how this particular specimen is very different
from the one you saw on the previous slide the heel different contra contrary to the first
time you saw this little bottle feel different here is in a completely different style the
wording is also extremely sharp very much sharper than the rest of the image which is quite blurry
we don't like blurry specimens by the way you definitely want to give us good high quality
image files now um if we saw this and we saw the differences in the sharpness and also the
differences in the color that very stark black that would prompt a refusal for sure
and um we also would note that the wording heel different here seems to float
above that blurrier image that's because of the unusual sharpness of the wording and so this is
a situation where you would definitely if this is what your client gave you you want you would
probably want to see if they have something better to submit okay last poll next slide
now look at this one very carefully too this is our old friend moon time tea again
you're going to get it i want you to look at this very carefully because this looks pretty
good to me tell me would you approve this specimen or would you reject the specimen
so would you refuse registration based on this specimen yes or no
10 second warning
okay we're going to go ahead and close this poll
now i am curious to see how many people would accept this specimen because it is not acceptable
it's not acceptable because this is a printer's proof or at the at the very least it is a
digitally created specimen how do we know because of the machine language that's down in the bottom
part in that little yellow section where you see all of that sort of latinate language
that's placeholder language that's usually a space that's held in a printer's proof that where the
client hasn't quite decided what's going to go in that space and so they put lettering or this
kind of wording in there when we see that kind of placeholder language that is a dead giveaway
that the specimen is not in use in commerce so it looks like most of us got that around but around
500 of us might have missed that issue those are the types of things you're going to want to
really look for before you submit your specimens from your clients
okay next slide and i'm going to turn you now back over to my partner mark
thanks renee um let's talk about web page url and access date for a second
beginning last year february of last year every web page specimen must include its url and access
date to be acceptable now there's a there's an exception which we'll talk about in a second but
generally speaking for web pages you have to provide the url and access date you can provide
it any way you want there's no specific way to provide it you can provide it directly on the
specimen itself you can provide it within the form you can provide it in a later filed response as
long as that statement is verified next slide please so you'll see in a minute the forms
and uh there are special fields for providing the url and access date but if you can't have trouble
finding them or using them you can put them other places in the form you can put it in the specimen
description in the miscellaneous statement or in the arguments for example next slide please
here's an example of the easiest way to get us that information
this is just simply taking a screenshot of your computer screen
with the web page of interest open the mark here is the farnum it's for hotels
you can see that that captures the url at the top of the page and it captures the time and date you
access this page at the bottom of the page because you've taken a screenshot of the computer screen
next slide please alternatively you can invest in some screen capture software
and there you when you capture the web page it won't necessarily capture the the entire screen of
the computer with including the url and the access date as we saw in the previous slide but it will
print that information at the top of the specimen or somewhere around where the specimen is being
submitted and here you can see the access date and url are provided by the screen capture software
next slide please so here's a look at the form this is an application form you can see that
the arrows are pointing to web page specimen fields that are that uh include space for the url
and the access date there's a button if you need to provide more just click the add additional url
and dates and you can add additional urls and dates next slide please and similarly in the
response form there's space dedicated to providing this information to us we're trying to make it
as easy as possible for for you all to get that information to us now let's talk about next slide
an exception so if the web page contains a good picture of the mark of the goods bearing the mark
the url and access date are not necessary the key here is that the picture itself
has to be a good picture it can't be a computer generated picture it can't be a
digitally altered picture or any other kind of mess with picture it has to be an actual
good picture of the goods and if that's the case we don't need to rely on the web page
itself we're relying on the picture next slide please and here's an example of that
gnc for vitamins there's a good picture of the packaging here bearing the mark although it's a
web page type specimen we don't need the url and access date for acceptable to accept the specimen
now i'm going to turn it back over to renee to talk about some things to avoid when submitting
specimens thank you mark now when you're trying to decide whether or not to submit a specimen to
us from your client there are a few things you're going to want to do as your due diligence first
thing is you it's always helpful for an examining attorney if we have questions and we need to call
and contact you if we're confused about you know just what are we looking at sometimes if you are
knowledgeable about that specimen so be sure and discuss with your clients about the specimens that
are going to be submitted um make sure that the quality is it's good quality yeah it's difficult
when the specimens and art come in are of marginal quality blurry difficult to read we typically
won't refuse a specimen if we can figure out we can see enough of it to make out the mark and
make sure that it complies with the requirements of a specimen even if it's not in the greatest
greatest quality but it's always helpful if you give us something that's nice and clear
next slide please if you're going to give us a display make sure that you
give us the entire display so that we see as much of it as possible
we sometimes get closely cropped displays where maybe there's only one
good showing on a table and it's difficult to uh to determine whether that's an actual
display or if it's just a picture of the mark that and mark's not actually
on the on the product um and then it's always helpful for us if you highlight
or put arrows at places where you feel the mark is showing proper use next slide please
now i'm going to say this a third time about brochures for goods uh specimens
generally they are not going to be acceptable so avoid giving us brochures as uh as as specimens
for goods if you do give us brochures though you definitely need to also give us
a um a an explanation as to how those brochures are used at the point of sale
now you should also consider giving us a couple of good specimens now let me be very careful
about what i mean by this i am not suggesting that you just throw everything you have at us
and hope something fits no what i'm saying is if you have a couple of really good specimens
give us those couple of good specimens so that on the off chance there's something wrong with
the one that you were going to submit a loan if there is one that is acceptable we'd be able to
go ahead and accept that specimen and not have to send you an office action i want to be very clear
that what we do not want to see are any specimens that would be digitally altered digitally created
or mock-ups as multiples of the specimen those are not acceptable and you should not allow your
client to put those into your application okay next slide please
um next slide please now we've come to the end and um again we want to thank you for coming
here are some resources and some areas where you can learn more about specimens and specimen
issues i'm going to turn it back over to tasha and she's going to open the floor for questions
okay tasha we can't hear you
and let's go to the next slide too so that if anybody needs to submit a question what we're
going to do is ask you to send them that to the email that you see on the slide here all right
here we go so the first question is will you please discuss book specimens for for instance
if it's a series name but it's on one the spine two the back of the book cover or three
on the inside title page do those qualify so for book specimens you certainly do of course
have to show a series so as you avoid that title of a single work refusal we look for
those uses to be in the traditional places that one would find the producer of the book so if it's
a series yes we look to see if it's on the spine we can certainly see it on the back book cover
possibly it could be on the the inside title page so there's no one answer to book specimens
but what i would say is that it needs to be distinguishable from the title of the book
all right i'm going to turn into mark mark has a there's a question directed to you
sure um the question is is there a rule regarding how will the website screenshot specimen should be
in order to be accepted by the trademark office for statements of use maintenance filings etc
for example website screenshot may be submitted with a registration that doesn't isn't dated
within a certain time period of filing and there's a two-part answer to that question the first part
is for purposes of application or filing an sou or an aau there's no hard and fast rule for
um how contemporaneous that specimen has to be but a good practice is to make it
as contemporaneous as possible so that it represents use of the time you're filing
it's a little bit different post registration for post registration filings of course
there has to be we're we're asking that you show current use of the mark so in other words use
the mark in the statutory period for filing your section 8 or 71. in that case if the
if the web page specimen is dated outside that statutory period when you're filing
it will not be accepted because it doesn't show current use of the mark in commerce
okay so we have a question when filing an sou would you accept specimens that
show the registration symbol adjacent to the mark the answer to that is it depends
um you all know the rule that you should not be displaying the registration symbol unless you have
a registered mark and there is the distinction right there you have a prior registration
for that mark you may have a standard character version or you may have a stylized version that's
different from the the instant application there's no problem with having the registration symbol
on your specimen if on the other hand you have not registered a trademark with the uspto
you really should not be displaying that symbol on your specimen until
you actually have a registration okay we have another question um the question is
if a specimen is unacceptable and you change the website to more adequately reflect uh i
guess acceptability could the substitute specimen cure the problem or must the specimen have existed
by a particular point in time the answer to that question is that you have to show use and you're
swearing to use as of the filing date or the filing date of the statement used or aau
so if it's not reflecting use as of that date it probably isn't acceptable and shouldn't be
submitted if you go ahead oh oh i'm sorry did you finish that question i did okay all right so
here's another question please address means of ordering in a catalog is a phone number to call
in an order sufficient what about the websites for goods that are industrial or highly specialized or
expensive products and therefore there is no buy now option but a request for quote button and what
about when there's no buy now option and there's a request for quote button instead okay there's a
lot to unpacking that question all right so what i'm going to say about the means of ordering in a
catalog is we we follow the case law the case law uh requires things like an order page um
uh we also you know want to be able to see that there's some kind of an order form not just a
phone number and a web page that's generally not going to meet the requirements for catalog
now as far as industrial or highly specialized or expensive goods where one would not actually order
them online that gets into a situation where we have to consider what are the
customs in that particular industry and that's where you can be helpful
when you give us the specimen you can give some of that background information
that said you know if you you if you give us a specimen that is a website it needs to be a
it has to be distinguishable from something that would just advertise that the goods are available
it's got to cross over into into the land of we're now offering you a means for purchasing the goods
so requesting a demo is probably in the same category as the demo button that we talked about
with regard to software it doesn't necessarily offer a um it's not an offer of sale so much as
it is an offer to try and inspect the goods and in that case it's not going to be able to show an
online electronic point-of-sale display um so yeah so hopefully that answers that question
okay we have another question um this one's pretty simple are labels okay even if they're
purely digital and the short answer to that question is probably not no because the specimen
has to show mark as actually used in commerce so a digital label is something that wouldn't be placed
on the goods and put into the stream of commerce so it wouldn't be acceptable as a specimen
okay all right so here we have another question if the download button is behind a paywall that
is only members can download but the public can view and use but not download with that specimen
that shows an image from behind the paywall be refused because the only the only members only
the members can download i apologize i'm trying to edit this as i'm reading it that is if the
trademark examiner went to the site they would not see the download option okay so i think
what you're asking is if it's not obvious that you could download the software on the specimen would
we refuse it i apologize if that's not what you're asking and the answer to that is yes we would have
to refuse that because downloadable software is a good and if what we're looking at is simply giving
us information about software it then falls into the category of being merely advertising now um
probably you know the best way is that there is a way for folks to actually download the
goods and it really doesn't matter that only members can see it if the customers are members
then you know by all means give us the specimen showing that the members can actually download
the software your specimen has to show all of the required criteria the examining attorney
cannot add evidence to the file so even if they were to go on a website and be able
to verify that it actually is downloadable if on the face of that specimen um it's not
clear that the software is downloadable they would have to do a refusal in that situation
okay another question we have please address uh guidelines on the acceptability of the following
advertising materials for services so again we're in the we're in the world of services
and advertising is acceptable uh type of specimen for services and specifically they're looking at
press releases invoices and contracts i'll start with the easiest first invoices are acceptable uh
specimens for services assuming it displays the mark it associates the mark with the
services and invoice can be acceptable um press releases are a little bit it depends
if they're publicly available on the applicant's website they can be acceptable again they have to
display the mark and associate the mark with the services um contracts i'm not sure
i think hunt and i'll give you a team ap site in a second contracts probably would be okay
again if it displays the mark references the services and makes an association between the two
um there's uh a tmep section that kind of goes into this a little bit it's 1301.04 so
take a look at that and see if that elucidates things a little bit further
okay so what about when a seller is selling a service through a third-party site like etsy
not quite sure what you mean by selling a service i think maybe you meant to say selling a product
these sites don't always allow the seller to put their mark in large prints or to change the font
can a specimen of the third party's website be a proper specimen if not how can the mark owner
provide a good specimen so let's deal with the first question there yes you certainly
can provide us a point of sale display using a third-party website websites like amazon etsy um
uh shopify all of those as long as you are using the mark in a trademark manner as long as it is
functioning as a source identifying mark then yes there you certainly can the mere fact that it's
on a third-party website does not uh discount it from being an online display electronic display um
now uh if you know if on the other hand you're using it in a manner and this happens sometimes
where the mark is used in a way where it doesn't really stand out very much
it's not perceived by a mark there's a possibility you might get a failure to function refusal but
again it doesn't take much um it really doesn't so you don't have to we don't require that there be
a particular type of font or particular size of font we're really more concerned
with how would this mark be perceived by a a typical consumer for this particular product
okay okay we have a couple more questions a two-parter the first one is how can one
successfully submit this is from a gamer uh how can one sub successfully submit specimens
for an in-app purchase of virtual goods in a downloadable game or virtual world
i'm not a big gamer so i'm not sure how it works but again i would go back to the general rules on
uh electronic displays if i'm sure what the difficulty here is going to be is
showing the means to purchase there has to be some click or action the
player has to take to purchase the goods um as long as that's clear from the specimen it could be
an acceptable specimen then the second part of the question is
do the requirements for software specimens reply apply to apps and the answer that question is
absolutely yes apps are just the type of software and they're also um software is a
good generally speaking in other words there's something you download to your phone or ipad um
okay all right here we have another question are slide decks or pitch decks acceptable specimens
does it matter if it is a pdf or screenshot of the powerpoint what if it is used to gain investors
okay so there's three questions there um the first thing is that um pitch decks it depends on what
their the the mark is showing if it is uh for goods it's probably not going to work because
the pitch deck sort of in in essence is um is promotional material and as you know promotional
material is not acceptable for goods if you're talking about services it depends again on the
nature of the services there are certainly times when um a slide that can be shown to be promoting
the services to consumers this is a situation where you definitely want to explain how that
pitch deck is used in commerce if it is only used to gain investors that is a situation where
unless the services have something to do with gaining investors from third parties probably
that's not going to be seen as used in commerce if it actually you know if a company is using
a pitch deck to get funding for itself um that in and of itself is not a service for the benefit of
others so i would be careful with those types of specimens as far as pdfs or screenshot of the
powerpoint i'm going to have to tell you that i i deal with this side of the business so i'm not 100
sure if we accept pdfs at this point i think we do but um i know we take
jpegs and so um if you want to be for sure safe that your specimen is going to be viewable it's
probably a good idea to send it in jpeg form i would suggest if you following up on that question
with a technical question to the technical folks i believe it is uh help uspto.gov but i'm not 100
sure look on our website and find out where to get technical assistance and they can certainly
um uh give you some guidance um as to the format of your slide deck okay
okay this is kind of a long question but it's basically about the curb karma example and there
was some confusion as to when an app is doing the work versus and providing a service versus
when it's not um the way i think about this is if the app is performing a service activity if the
service activity is taking place in the app or by the app then it's providing a service
it doesn't mean that silly that you don't also have a good specimen for a downloadable app you
might have that as well but you might also have a service being provided through that app if if
the activities are taking place in the software um rather than um the
user or consumer having to do things uh to uh perform the activity that's listed as the service
that's kind of the distinction there i i'm sure there's gray areas in between where it's harder
to distinguish between the two but that's the distinction we generally make between when it's
software versus services provided via software
all right now now that there are specific fields on the form web page for the webpage
url and access date do we still have to also put that information on the screen
capture the answer that is no as long as that information is somewhere in the application
we will we will have what we need so there are as mark sort of explained earlier
there are numerous ways of giving that information to us in your application
okay how about specimens that are already of record can they be submitted as
for your maintenance filings for example can a specimen downloaded from tso
dr be used to show use in commerce again we're showing current use in commerce if that
represents current use in commerce that may be acceptable but it's a better practice to show um
the uh specimen that's contemporaneous with the uh uh filing of the maintenance filing
okay is there a standing prohibition on photos with solid white or black backgrounds as specimens
of goods many e-commerce sites use a solid background and applicants may have high quality
photos with such backgrounds yet i have never had an examiner except one with the white background
okay so i need to think about this question a little bit because i'm
not quite sure the fact scenario so first of all there's no standing prohibition
regarding backgrounds what may be happening is that there is an issue where maybe there's some
kind of matching issue going on with the mark in the specimen or perhaps what's being submitted
looks like it is a digitally created specimen um you know if you've got high quality photos
um you know if if you're having trouble with a black or white background it may be a situation
where you might want to crop out all the extra material and just submit the part that constitutes
the photo of the um oh i'm assuming of the goods themselves but would also work for services
but that's that's the best i can do with that question right now i'm not a hundred percent sure
the fact scenario that you're referencing can i jump in here i they might be talking about
these retouched images that we get sometimes as specimens and um they're taken from a website
or something so they've been you know doc not doctored but they've been processed to look very
good and that there's no prohibition against that but if you're worried about drawing a refusal in
those situations rather than just providing this the photograph or the touch retouched
image or the image on the white background why not provide the whole point of sale display
um that way the examining attorney is more likely to see that as an acceptable specimen um another
question i have a follow-up question the post registration website and specimen question are you
saying that we have to wait until the statutory period opens to obtain a specimen from our client
we can't use the specimen created a week or two or but before the statutory period opens
if it's representing what is going on when during the statutory period it could be acceptable but i
mean it's always better to show to not raise the question in the examiner's mind as to whether
that is showing current use or not okay all right so um we've got a really good question
here an applicant was unable to use a mark for advertising services during trade shows in 2020
because of covid however the applicant was able to use the trademark in the context of virtual trade
shows with potential clients via zoom teams or other means is the use of the trademark
in the powerpoint presentations or videos used during the virtual trade shows acceptable
i would say most likely yes they are but again um if you simply give a powerpoint presentation with
no additional explanation as to how that powerpoint was used the examining attorney
isn't isn't going to have that background to make a good decision there but do you give
us that background information so that we can make a proper determination in that situation
all right and here's another one if you have a good specimen for goods but the image is small
can you submit an additional close-up that uses a magnification tool um sure you can absolutely um
that i we understand that there are times there are limits to
how much you can improve the quality of an image in a specimen and so if you give us specimen you
can certainly give us a second page that enlarges the image and it but again give us an explanation
as to what that second page is so that the examining attorney will be able to properly
analyze what that particular specimen is and won't think of it well those are just two bad specimens
okay i got kind of the same question again so i must not have answered it very well um
can specimens that are already in the record be submitted for maintenance filings for example can
a specimen downloaded from tsdr be used to show using commerce i would say you shouldn't do that i
mean does that show current use again this is what we're looking for current use meaning use in the
statutory period it's likely not representative of that use and wouldn't be acceptable
okay so if you file a specimen and it is rejected is there any way to
change your application to an itu after the specimen rejection or is the only thing to do
is file a new application itu um you will all if okay so i'm going to answer that question
by saying it depends on whether you are where you are at the point of that refusal so let's assume
that you are prior to the mark being published and you filed you filed 1a
if you do that then you can always prior to prior to publication amend the filing basis to 1b and
then give us a specimen after the mark is actually in use if on the other hand the issue comes up
after an sou the answer there is it depends if your sou is in the first six months
of the filing period and you have filed what we call an insurance
extension um you would be able to move forward you would not be able to change it to 1b but
you'd be able to move forward your use dates um at the same time if it's at the sou period and you
haven't filed your sou yet you get your notice of allowance you can simply file an extension of time
um if you're not sure it's always better to to to file either an extension or an insurance extension
with your filing of your sou just in case you run into problems with your specimen like this
because on the back end once it's been published there is no going back to itu but on the front end
if it's prior to publication yes you can amend to one b hopefully that answers your question
got a question about apparel and footwear is it necessary for ticketing to be attached to the
product without visiting a retail store this can be difficult to produce in the past photographs
of ticketing itself have been accepted but it's my understanding they aren't accepted anymore
i think by ticketing we're talking about tags and things like that and like renee
was explaining during her presentation uh if it's attached to the goods that's great
but if it's unattached uh we can't accept it if there's that information indicating
that it's an actual tag used in in commerce so information about the goods pricing upc codes
size size thank you things like that
yeah so if that kind of information is on the tag we can accept it apart from the
from being a fix to the goods
all right so mark you're up again they're asking about the statutory period
does the statutory period for use include use during the grace period yes
so you can file during the grace period and show use during the grace period yes
it's always good when there's a yes or no answer okay do we have any more questions
you all asked very very good questions i i i think this is a very uh experienced
group of uh practitioners tough questions no questions no more questions all right
go ahead looks like something might be coming out coming in
oh oh yeah yeah we were we were about to get you out of here we'll give you back a half an
hour but it looks like we've got a maybe a few questions coming in
okay um one last one for me can you please touch briefly on the requirements relating to specimen
audits please so there's a lot in there but specimens for audits are going to be generally
the same as regular specimens except they're going to have to show use with the specific
good or service audited so there has to be if it's not affixed to the particular good or service and
it's not clear that it's socks for example um the tag or whatever should be labeled as socks so we
know exactly that this specimen is associated with socks and not some other article of clothing um
and that's kind of the difference between special we need to know that
exact relationship between that exact good or service and that proof of use especially
okay well it looks like if we don't have any more questions looks like we've come to the end of our
discussion today we certainly hope that you got something out of today and
will be able to use some of the information in your practice mark did you want to add anything
at the anything is closing um no i just i'm very happy with the turnout and i'm glad everybody
was able to attend i hope like Renee said that i know there's probably things in here that people
already knew but hopefully there is something in here that you know turned on a light bulb or
enabled you to learn something new today so thanks a lot for coming thank you very much we're going
to turn you over to um Tasha now thank you mark and Renee and thank you all for attending our
presentation today um although we didn't get to all of the questions that we had we will certainly
use the questions and the feedback received from today to determine how we can update or expand our
resources on and information on specimens in a few minutes you will receive an email with a survey we
hope that you will complete the survey to let us know how we did today and provide suggestions for
future webinar topics for those viewing the recorded version of this webinar please feel
free to email your feedback and suggestions to tm underscore webinar at uspto.gov we are also
continuing to collect feedback on implementation of the trademark modernization act if you are
familiar with the trademark modernization act or if you would like to know more there's a webpage
on a page on our website with more information if you have comments please send your written
comments to tm feedback uspto.gov thank you all and have a great rest of your day!