TMEP 1301.04(f): Elements of an Acceptable Service-Mark Specimen
October 2017 Edition of the TMEP
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1301.04(f) Elements of an Acceptable Service-Mark Specimen
To be acceptable, a service-mark specimen must show the mark sought to be registered used in a manner that demonstrates a direct association between the mark and the services. Essentially, the mark must be shown "in a manner that would be perceived by potential purchasers as identifying the applicant's services and indicating their source." In re DSM Pharm., Inc., 87 USPQ2d 1623, 1624 (TTAB 2008); see In re JobDiva, Inc.,843 F.3d 936, 941, 121 USPQ2d 1122, 1126 (Fed. Cir.2016) ("To determine whether a mark is used in connection with the services... a key consideration is the perception of the user."); In reAncor Holdings, LLC,79 USPQ2d 1218, 1220 (TTAB 2006) (citing In re Walker Research, Inc., 228 USPQ 691, 692 (TTAB 1986) ).
The acceptability of a specimen is determined based on the facts and evidence of record, and viewed in the context of the relevant commercial environment. See In re Ancor Holdings, LLC, 79 USPQ2d at 1220 ("[W]e must base our determination of public perception of applicant's mark on the manner of use of [the mark] in the advertising which has been submitted as a specimen. Further, we must make that determination within the current commercial context, and, in doing so, we may consider any other evidence of record ‘bearing on the question of what impact applicant's use is likely to have on purchasers and potential purchasers.’" (quoting In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992)). Thus, the information provided by the specimen itself, any explanations offered by the applicant clarifying the nature, content, or context of use of the specimen, and any other information in the record should be considered in the analysis. In re DSM Pharm., Inc., 87 USPQ2d at 1626 ("In determining whether a specimen is acceptable evidence of service mark use, we 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."); In re Ancor Holdings, LLC, 79 USPQ2d at 1220.
When the identified services involve newer technology, the examining attorney must follow the appropriate examination policies and procedures, but also should employ a practical approach in analyzing the submitted specimen. See In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286 (TTAB 2000) (finding a business card and stationery displaying the mark and the word "design" were acceptable specimens of use for applicant’s mark in connection with commercial art design services, noting that "[i]t is not necessary that the specific field of design, i.e., commercial art, also appear thereon" and that "the word ‘design’ alone is sufficient to create in the minds of purchasers an association between the mark and applicant's commercial art services"); In re Metriplex, Inc., 23 USPQ2d 1315, 1316 (TTAB 1992) (finding the submitted specimens acceptable to show use of applicant’s mark in connection with data transmission services because the specimens showed "the mark as it appears on a computer terminal in the course of applicant's rendering of the service" and noting that "purchasers and users of the service would recognize [applicant’s mark], as it appears on the computer screen specimens, as a mark identifying the data transmission services which are accessed via the computer terminal"). This may entail reviewing all the information of record to understand both how the mark is used and how it will be perceived by consumers. See In re JobDiva, 121 USPQ2d at 1126; In re Ancor Holdings, LLC, 79 USPQ2d at 1221. Additionally, if the examining attorney elects to conduct research regarding the mark, the services, or practices in the particular industry, it may be helpful to consider any information uncovered regarding how the applicant and others in the industry typically advertise and render the identified services in the relevant marketplace, as well as the manner in which service marks are normally used in connection with those services. See TMEP §1301.04(h)(iii) for a discussion of issues surrounding technology-related services.