T.M.E.P. § 1301.04
Specimens of Use for Service Marks
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1301.04 Specimens of Use for Service Marks
A service mark specimen must show the mark as actually used in the sale or advertising of the services recited in the application. 37 C.F.R. 2.56(b)(2). Acceptable specimens may include newspaper and magazine advertisements, brochures, billboards, handbills, direct-mail leaflets, menus (for restaurants), and the like. However, printer's proofs for advertisements, publicity releases to news media, or printed articles resulting from such releases, are not accepted because they do not show use of the mark by the applicant in the sale or advertising of the services. Business documents such as letterhead and invoices may be acceptable service mark specimens if they show the mark and refer to the relevant services. See TMEP §1301.04(b).
1301.04(a) Specimens Must Show Use as a Service Mark
To show service mark usage, the specimens 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. 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 services were advertised in the same brochure in which the name of the process was used); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART perceived as informational matter rather than as service mark for art dealership services, where the term is displayed inconspicuously in specimen brochure amid other informational matter, in the same size and font as the rest of the brochure text); In re Moody's Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989) ("Aaa," as used on the specimens, found to identify the applicant's ratings instead of its rating services); In re McDonald's Corp., 229 USPQ 555 (TTAB 1985) (APPLE PIE TREE did not function as mark for restaurant services, where the specimens showed use of mark only to identify one character in a procession of characters, and the proposed mark was no more prominent than anything else on specimens); In re Signal Companies, Inc., 228 USPQ 956 (TTAB 1986) (journal advertisement submitted as specimen showed use of ONE OF THE SIGNAL COMPANIES merely as an informational slogan, where the words appeared only in small, subdued typeface underneath the address and telephone number of applicant's subsidiary); In re Republic of Austria Spanische Reitschule, 197 USPQ 494 (TTAB 1977) (use of mark as one of many pictures in applicant's brochure would not be perceived as an indication of the source of the services); Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977) (business progress reports directed to potential investors do 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 does not 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 do not show use as a service mark for consulting services).
See TMEP §1301.02(a) regarding matter that does not function as a service mark.
1301.04(b) Association Between Mark and Services
Where the mark is used in advertising the services, the specimen must show an association between the mark and the services for which registration is sought. A specimen that shows only the mark, with no reference to 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, fail to show use for "design services in the nature of designing handcrafted, permanently decorated Christmas and designer trees"); In re Johnson Controls, Inc., 33 USPQ2d 1318 (TTAB 1994) (labels affixed to packaging of valves do not show use of mark for custom manufacture of valves); In re Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989) (bumper stickers showing only the mark do 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). See also TMEP §1301.04(c) and cases cited therein.
A specimen that shows the mark as used in the course of performing the services is generally acceptable. Where the record shows that the mark is used in performing (as opposed to advertising) the services, a reference to the services on the specimen itself may not be necessary. In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992) (computer printouts showing mark GLOBAL GATEWAY found acceptable to show use of mark to identify data transmission services accessed via computer, because they show use of mark as it appears on computer terminal in the course of rendering the services); In re Eagle Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986) (photograph of rented fence held acceptable for rental of chain link fences, since it shows use of distinctive color scheme in the rendering services); In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984) (photograph of costume worn by performer during performance of entertainment services held to be an acceptable specimen). In Johnson Controls, Inc., supra, 33 USPQ2d at 1320 (holding that labels attached to the packaging of valves did not show use of the mark for custom manufacturing of valves), the Board distinguished Metriplex and Eagle Fence, noting that the labels were not used in the rendering of the services, as the custom manufacturing services were complete before purchasers ever see the mark.
In determining whether a specimen is acceptable evidence of service mark use, the examining attorney 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 International 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.
Letterhead stationery, business cards or invoices bearing the mark may be accepted if they create an association between the mark and the services. To create an association between the mark and the services, the specimen does not have to spell out the specific nature or type of services. A general reference to the industry may be acceptable. In re Ralph Mantia Inc., 54 USPQ2d 1284 (TTAB 2000) (letterhead and business cards showing the word "Design" are acceptable evidence of use of mark for commercial art design services); In re Southwest Petro-Chem, Inc., 183 USPQ 371 (TTAB 1974) (use of mark on letterhead next to the name SOUTHWEST PETRO-CHEM, INC. found to be sufficient to show use of the mark for "consulting and advisory services relating to the making and using of lubricating oils and greases," when used for letters in correspondence with customers).
Letterhead or business cards that bear only the mark and a company name and address are not adequate specimens (unless the mark itself has a descriptive portion that refers to the service), because they do not show that the mark is used in the sale or advertising of the particular services recited in the application. In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB 1999) (letterhead specimens showing the mark MONOGRAMS AMERICA and the wording "A Nationwide Network of Embroidery Stores" held insufficient to support registration for consulting services for embroidery stores).
If the letterhead itself does not include a reference to the services, a copy of an actual letter on letterhead stationery bearing the mark is an acceptable specimen of use if the content of the letter indicates the field or service area in which the mark is used. In Monograms America, supra, the Board indicated that the letterhead specimen might have been accepted if the applicant had submitted a copy of a letter to a store owner describing the services. 51 USPQ2d 1319.
1301.04(d) Specimens for Entertainment Services
For live entertainment services, acceptable specimens include a photograph of the group or individual in performance with the name displayed, e.g., the name printed on the drum of a band. For any entertainment service, advertisements or radio or television listings showing the mark may be submitted, but the specimens must show that the mark is used to identify and distinguish the services recited in the application, not just the performer. See In re Ames, 160 USPQ 214 (TTAB 1968) (advertisements for records show use of the mark for entertainment services rendered by a musical group, where the advertisements prominently featured a photograph of musical group and gave the name, address and telephone number of a booking agent).
A designation that identifies only the performer is not registrable as a service mark. See TMEP §1301.02(b) regarding the registrability of names of characters or personal names as service marks.