Earlier this fall, the U.S. Patent and Trademark Office posted its final version of Examination Guide 3-14 on the topic of Service Mark Specimens. Among other things, this guide reviews the requirements for service mark specimens, discusses issues that frequently arise in the examination of service mark specimens, considers specimens that are commonly submitted in connection with modern technology-related services and, most helpfully, provides numerous examples of acceptable service mark specimens. Although the guide focuses on service marks for computer-related technologies, the examination principles are generally applicable to all service marks.
The following are just some of the guide's points that are helpful to secure acceptance of an Allegation of Use or to avoid a specimen refusal:
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Provide a specimen and description that explains what the specimen is and how the services are rendered. E.g., "specimen is a screenshot from a hand-held mobile device showing the mark as used with online social networking services."
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Be sure that the services of the application have been properly identified. E.g., medical billing services (in Class 35) versus providing non-downloadable software for medical billing (in Class 42). Similarly, use of a social networking page to advertise, say, cleaning products should not be misidentified as online social networking services.
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Provide sign-in or launch screens that place the mark squarely in the context of the services that are rendered. This is particularly important for the service of providing non-downloadable software. If services are not clear from the sign-in or launch screen, provide an explanation or several screens, which, when considered together, convey a "proper nexus" between the mark and the services.
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If your specimen is less than ideal, consider declarations or industry-related periodicals to evidence how marks and services are similarly promoted or rendered in the relevant industry, or provide other information on the nature, content, and context of use of the specimen.
The full text of Examination Guide 3-14 can be found here.
