BitLaw

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). "[B]ecause by its very nature a service mark can be used in a wide variety of ways, the types of specimens which may be submitted as evidence of use are varied." In re Metriplex, Inc., 23 USPQ2d 1315, 1316 (TTAB 1992). Whatever type of specimen is submitted, it must show proper use in commerce of the mark, which may be established by (1) showing the mark used or displayed as a service mark in the sale of the services, which includes use in the course of rendering or performing the services, or (2) showing the mark used or displayed in advertising the services, which encompasses marketing and promotional materials. See On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1088, 56 USPQ2d 1471, 1476-77 (Fed. Cir. 2000) (indicating that an online menu item bearing the mark ONLINE TODAY was proper service mark use in connection with "providing access to online computer services offering computer-industry news, commentary and product reviews" because, inter alia, the "menu items are the mechanisms by which users obtained access to a particular online service"); In re Metriplex, Inc., 23 USPQ2d at 1316 (indicating that a specimen that does not explicitly refer to the services may be acceptable if it "show[s] use of the mark in the rendering, i.e., sale, of the services"); In re Red Robin Enters., 222 USPQ 911, 914 (TTAB 1984) (stating that "rendition" of services is properly viewed as an element of the "sale" of services); 37 C.F.R. §2.56(b)(2). For purposes of clarity and simplicity, the term "rendering" is used in the following sections when discussing specimens that show use of the mark in the sale, performance, or rendering of the services.

The type of specimen submitted will often be apparent without the need for additional information regarding how the mark is used on the specimen. However, a specimen description submitted by the applicant typically helps clarify the manner in which the mark is used in commerce, and the more explanation the applicant provides initially, the more helpful it is to the examining attorney’s analysis. Thus, applicants are encouraged to provide a specimen description and explain how the applicant renders or provides the services and, if relevant, how marks are commonly used in the particular industry for such services. For instance, a description stating that a specimen comprises a title screen bearing the mark and showing the mark used in rendering the identified services is helpful for determining the nature and acceptability of the specimen.

If it is not readily apparent that the specimen meets the criteria for an advertisement or rendering type of specimen, and any specimen description does not provide adequate clarification, the specimen must be refused for failure to show use of the mark in commerce. See TMEP §1301.04(g) regarding the grounds for refusal. If further clarification regarding the nature of the specimen or the manner in which the mark is used may easily overcome the refusal (e.g., an explanation that the specimen is a title screen displaying the mark at the start of the provision of the identified services), an advisory to that effect may be included with the refusal. Under Trademark Rule 2.61(b), 37 C.F.R. §2.61(b), an examining attorney may also require the applicant to submit additional information about the specimen or the mark’s manner of use.

Regardless of whether the specimen shows the mark used in the advertising or rendering of the services, the examining attorney should consider the following when determining whether a service-mark specimen is acceptable.