1301.04(h)(iii) Specimens for Technology-Related Services
Proper specimen analysis requires consideration of the nature of the identified services. Modern computer and technology-related services present special challenges because these services, and the terminology used to describe them, are continually evolving. In addition, any online activity entails the use of computer software, making it difficult to differentiate the various services provided online from the underlying technology used to provide them. As the Board has noted, "[a]lthough it may well be software that is generating the [services], in today's commercial context if a customer goes to a company's website and accesses the company's software to conduct some type of business, the company may be rendering a service, even though the service utilizes software." In re Ancor Holdings, LLC, 79 USPQ2d 1218, 1221 (TTAB 2006); see also In re JobDiva, Inc., 843 F3d. 936, 121 USPQ2d 1122 (Fed. Cir. 2016). ("[I]f the software is hosted on JobDiva’s website such that the user perceives direct interaction with JobDiva during operation of the software, a user might well associate JobDiva's marks with personnel ‘placement and recruitment’ services performed by JobDiva").
It may be unclear, based on the submitted specimen, whether the applicant is providing non-software services in a given field or subject matter (e.g., "financial consulting in the field of retirement planning" in Class 36), or offering computer software or application services involving that same field or subject matter (e.g., "providing temporary use of non-downloadable software for retirement planning" in Class 42), or both. Sometimes, an applicant that is actually providing non-downloadable software services (e.g., "providing temporary use of non-downloadable software for medical billing" in Class 42) misidentifies the services as the underlying function of the software (e.g., "medical billing" in Class 35). Similarly, the applicant may be using social networking websites to advertise non-social networking services (e.g., operating a pet store) and communicate with customers, leading the applicant to misidentify the services as "online social networking services" in Class 45.
Thus, a primary consideration in these instances is whether the specimen indicates that the applicant is actually performing the relevant service activities for others, or, for instance, merely providing software that allows users of the software to perform those activities themselves, or only offering an online game that is accessed via a social networking website. See TMEP § 1301.04(i), Example 5 (ATHENACOORDINATOR), Example 7 (CLINICANYWHERE), and Example 14 (OUTERNAUTS).
Furthermore, some traditional services, and the associated terminology, may require fresh understanding and broader interpretation in the modern commercial environment. More and more traditional services are now offered online and, increasingly, multiple services are seamlessly integrated, creating difficulty in distinguishing the source of the services. For instance, television programs that were once provided only by broadcast television and cable outlets are now also accessible via streaming services like Netflix®, Hulu®, or YouTube®. Thus, typical service identification terms like "broadcasting," "distribution," and "transmission" have taken on new meaning in the modern marketplace. Thinking of traditional and other services more broadly and being cognizant of the current marketplace realities will also help the examining attorney determine whether the specimen properly shows use of the mark in association with the identified services.
When the nature of the services is not readily apparent from the information of record, such as the identification and specimen, the examining attorney may consult several resources for research and guidance, including: the notices and notes in the U.S. Acceptable Identification of Goods and Services Manual (ID Manual); the applicant’s and third-party websites; telephone or e-mail communication with the applicant or applicant’s attorney; technology dictionaries, encyclopedias, and trade and industry publications; and the Office of Trademark Classification Policy & Practice. In addition, the Trademark Law Library is available to assist examining attorneys with research. Finally, the examining attorney may require the applicant to provide further information about the services, pursuant to Trademark Rule 2.61(b). 37 C.F.R. §2.61(b).