TMEP 1301.04(j): Examples of Unacceptable Service-Mark Specimens

This is the October 2015 Edition of the TMEP

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1301.04(j)    Examples of Unacceptable Service-Mark Specimens

EXAMPLE 20

Screenshot of I0Bit webpage displaying information about distributing applicant's products, and about what applicant does.

Mark: IObit

Services: Computer programming; Computer software design; Conversion of data or documents from physical to electronic media; Data conversion of computer programs and data, not physical conversion; Duplication of computer programs; Hosting of web sites; Installation of computer software; Maintenance of computer software; Research and development for new products for others; Research and development of computer software; Updating and maintenance of computer software, in Class 42.

Analysis:

  • Specimen is a “screenshot from applicant’s website.”
  • The Board found the following statements were vague and did not sufficiently reference the services:
    • “Our sincere commitment to all our customers is that we will continue delivering innovative system utilities that are as simple to use as they are powerful and reliable. We also promise that we will keep providing the first-class free software and online service, for personal or non-commercial use.”
    • “We pursue the genuine ambition of becoming one of the world's top utility producers and Windows system service providers on the Internet.”
  • It is unclear whether the reference to “online service” is to a separate service or part of the free software goods. The textual reference to becoming a top utility producer and Windows system service provider is not sufficient to indicate being a provider of the identified services.

EXAMPLE 21

Screenshot of Leading Edge Toners webpage for ordering ink and toner printer supplies.

Mark: LEADING EDGE TONERS

Goods: Numerous goods including toner; toner cartridges, in Class 2; components for laser toner cartridges; and printer parts, in Class 9; and Ink sticks, in Class 16.

Analysis:

  • Specimen is described as a “web page.”
  • Mark is displayed in several places, including at the bottom right corner next to the copyright notice.
  • The Board noted that “where the mark is used with the copyright notice..., applicant assumed ‘without admitting’ that the use was solely as a trade name.”
  • While the specimen is not acceptable for the identified goods, had the mark been used in connection with retail store or distributorship services, the specimen would likely have been acceptable due to the placement of the mark on the upper left corner of the webpage where service marks normally appear.