TMEP 904.03(a): Labels and Tags

This is the October 2015 Edition of the TMEP

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904.03(a)    Labels and Tags

In most cases, where a trademark is applied to the goods or the containers for the goods by means of labels, a label is an acceptable specimen.

Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown. In re A.S. Beck Shoe Corp., 161 USPQ 168 (TTAB 1969); Elec. Commc’ns, Inc. v. Elec. Components for Indus. Co., 443 F.2d 487, 170 USPQ 118 (8th Cir. 1971). They are not acceptable if the mark as shown is merely used as a trade name and not as a trademark. An example of this is the use of the term solely as a return address. In re Supply Guys, Inc., 86 USPQ2d 1488 (TTAB 2008); Bookbinder’s Sea Food House, Inc. v. Bookbinder’s Rest., Inc., 118 USPQ 318 (Comm’r Pats. 1958); I. & B. Cohen Bomzon & Co. v. Biltmore Indus., Inc., 22 USPQ 257 (Comm’r Pats. 1934). See TMEP §1202.01 regarding trade name refusals.

In connection with labels whose appearance suggests that they are only for temporary use, the examining attorney may consider it necessary to make further inquiry as to how the specimen is used, under 37 C.F.R. §2.61(b), in order to properly examine the application. A response to the inquiry may include an additional specimen(s) if labels of a more permanent nature have by that time been adopted. However, nothing prohibits the registration of a mark in an application that contains only “temporary” specimens, provided that the specimens were actually used in commerce. See In re Chica, 84 USPQ2d 1845 (TTAB 2007) (specimen deemed unacceptable not because it was temporary but because it comprised a mere drawing of the goods with an illustration of how the mark may be displayed and not an actual specimen that applicant used in commerce).