Exercise care when filing a service mark specimen in a trademark application filing.

If you sell a bottle of wine and are looking to register a brand name as a trademark with the Patent and Trademark Office, it’s pretty easy to meet the PTO’s specimen requirement.

You can place the trademark on the bottle, on packaging, or on a webiste where the public can order the product, along with pricing information, and use of the mark. The goal is to associate a mark with a certain product, and it is easy enough to do with products such as wine, soap, candles, and anything that can be found on a shelf. Just place the mark on the product (or website with ordering ability).

However, those in the service mark space do need to make the sure the trademark is associated with the service. If a company provides a service, it isn’t too difficult to list a number of services on the company website, or on collaterals that have been distributed to the public. Of course, those materials must actually be in use in commerce, not just a creation on a website. The Patent and Trademark Office will not accept .jpeg or .pdf files that may only exist to meet the PTO’s specimen requirement. The service mark must be used on materials that are available to the public (this is why websites are ideal).

When the trademark is not the company’s housemark, make sure you emphasize the service mark, whether it is in larger font or different colors, and place it is near as possible as the services provided under the mark. If the mark is at distance from the services, the specimens may not show an association between the services and the mark itself, thereby marking them unacceptable.

One last note, a service is provided for others, and the PTO will not accept any specimen for a process, method, or “solution” unless an actual service is provided. With that in mind, make sure any specimens of use indicate how the company is providing a service that goes along with the process/method/solution. The Trademark ID manual located at https://idm-tmng.uspto.gov/id-master-list-public.html can help in defining the nature of the services

If you have any questions regarding acceptable specimens or trademark filings, feel free to give us a call at (703) 288-5248, or by e-mail at jon@schiffrinlaw.com or info@schiffrinlaw.com