The Change Message

President Barack Obama's message of change has been a constant since he announced his candidacy on the steps of the Old State Capitol building in Springfield, IL. And on January 20, 2009 a huge change in the face of politics happened.

The President's theme has inspired folks all around the world. It's even made it's way into the world of trademarks.

A mere 2 days after the inauguration, 562 Media Inc., a marketing and design firm, filed for MakeAChange.org, which will be "a website that gives users the ability to make donations for charity"

And just yesterday, 3 more applications were filed using change as a central word in their marks.

Erasoul Enterprise filed for Embrace Change in 3 different classes, namely, the jewelry, houseware and clothing classes.

Dreams for Kids Inc, a children's charity, filed for We Are the Change, which is a youth leadership program.

Hubbell Inc, the international manufacturer, filed for CreateChange for "energy efficient lighting information services."

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Specimens of Use for Service Marks

I’ve detailed the concept of specimens before but it’s a good idea to get into details about specimens as they apply to service marks.

The simplest explanation is that the USPTO wants something that clearly shows the mark (i.e. the name, the name & logo, etc.) AND something that once read it is obvious what services are being offered. In regard to service marks, this is accomplished in one of two ways: advertising or performing. Okay, so advertising – that’s pretty easy to understand, right? Brochures, yellow page ads, flyers, billboards, etc. In terms of providing a specimen showing the mark “as used in the course of performing services,” examples are best to illustrate this concept.

1) Amazon.com provides online retail services for a large number of goods. They provided a screenshot of their home page. Check it out here.

2) Starbucks provides coffee shop services and provided a picture of one of their coffee shops as a specimen. You can see it here.

Now the USPTO says that letterhead, business cards or invoices are acceptable but there’s a strict rule that must be adhered to – there must be an obvious association between the mark and the services. To avoid the dreaded office action, we recommend that our clients find another specimen as the USPTO tends to be rather strict about this.

We get a lot of calls from entertainers/bands and technically they’re offering entertainment services (live musical performances to be exact). Now providing an advertising specimen is still fairly simple here – a flyer advertising a show will suffice. When it comes to providing a specimen in connection with performance, the USPTO will accept a photograph of the group or artist “in performance with the name displayed,” e.g. name on a banner above the stage, name printed on the drum, etc.

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What is NOT a Service Mark?

Now that we’ve determined what a service mark is, let’s get into more detail about what a service mark is not.

There are 5 examples the USPTO provides and it’s my guess that these are often filed for accidentally. I know at TradeMark Express we’ve received questions about all 5 of these “services.”

1) Contests and Promotional Activities

Now you’d think that contests and promotions are obviously services, right? It is a real activity and is done for the benefit of others. But it fails the 3rd test in that it’s not necessarily distinct from the primary services. Contests and promotions are typically just tools of advertising. There is an exception which is that if the contest or promotion goes “above and beyond what is normally expected of a manufacturer in the relevant industry.”

For example, “clothing manufacturer’s conducting women’s golf tournaments held to be a service, because it is not an activity normally expected in promoting the sale of women’s clothing.”

2) Warranty or Guarantee of Repair

These activities are merely ancillary to the primary service of repair, auto sales, etc. Again, there’s an exception to this rule. “A warranty that is offered or charged for separately from the goods, or is sufficiently above and beyond what is normally expected in the industry, may constitute a service.”

3) Publishing One’s Own Periodical

Now if you are publishing other parties’ periodicals that is considered to be a service. “Providing advertising space in one’s own periodical may be a registrable service, if the advertising activities are sufficiently separate from the applicant’s publishing activities.”

4) Soliciting Investors

Offering shares and publishing reports for shareholders are not separate services as these are routine corporate activities. Now investing funds for others is definitely a registrable service.

5) Informational Services Ancillary to the Sale of Goods

Providing information, instructions, details, etc. about your goods, the purpose of your goods, how to use your goods, etc. is not considered to be a separate service.

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What is a Service Mark?

While the USPTO does use the term trademark to denote businesses offering goods or services, there is a distinction between a trademark and a service mark. To be clear, there is no difference between trademarks or service marks when it comes to needing comprehensive research or filing a Federal application. All of that remains the same.

For the most part determining if you’re offering goods or services is pretty simple. For instance, toys are a tangible good therefore Mattel is technically a trademark while tax preparation is a service there H&R Block is technically a service mark. There are plenty of companies that have both. Nike, for one, offers a line of branded goods as well as retail store services.

Where folks get confused when it comes to service marks is mistaking ideas or concepts for services. Let’s take a look at the USPTO’s criteria for determining what is or isn’t a service mark.

1) Service must be a real activity.

The best way to explain this is to explain what is not considered to be a real activity – ideas, concepts, recipes, systems, processes, methods.

2) An activity must be primarily for the benefit of someone other than the applicant.

Who benefits from the activity/service? If it’s yourself or your company, you’re not offering a service in the technical sense of the word. If it’s for others, you are.

“While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others.”

3) Sufficiently distinct from activities involved in sale of goods or performance of other services.

This sounds complicated but it’s really not at all. Basically, whatever service is filed for must be distinctive from the primary activity. “For example, operating a grocery store is clearly a service. Bagging groceries for customers is not considered a separately registrable service, because this activity is normally provided to and expected by grocery store customers, and is, therefore, merely ancillary to the primary service.”

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Guess the Logos, part 2

Okay, so I think I made Friday's test a bit too hard. Let's try this again. Guesses go in the comments section.

The first person to guess all 7 receives $50 off of our Premium Package.

Guess the Logos

Here's a fun to-do for Friday. The following image is an amalgamation of six famous logos. Can you guess them all? Answer in the comments.

The first person to guess all 6 receives $50 off of our Premium Package!

14:59 and counting...

While I hesitate to add fuel to the fire that is the Joe the Plumber phenomenon, I figured since he's been in the news (again) this week that it'd be interesting to check out what's going on in the trademark world in terms of the name.

Back in 1996, the name Big Joe the Plumber was filed for plumbing services. The name has been in use since 1916 and is based out of Illinois.

Fast forward 12 years and we've got that phrase saturated into the 2008 political season. As with any pop culture/political phenom, there are folks looking to capitalize on it.

October 12th - Wurzelbacher asks Obama about his tax plan
October 15th - McCain uses the phrase "Joe the Plumber"

October 20th - the USPTO receives the first application for Meet Joe the Plumber
October 21st - two more applications come in, both for clothing
October 28th - three applications filed, 2 for plumbing services and 1 for chicken (I'm confused too). This is also the same day Wurzelbacher appeared at a McCain rally.
November 12th - after a small lull, another application was filed for plumbing services
January 2nd - the most recent filing (and likely not the last) is for clothing.

Now that Wurzelbacher is back in the news, we'll likely see even more filings. My vote for the next filing is for tax planning services. We'll see...

How many names should I trademark?

A common question we here at TradeMark Express get is should variations on a name also be filed for trademark registration. For example, if your business name is Fly RIght, should variations such as Flies Right, Fly Write, etc.* also be filed? Another example is the singular vs plural variations on a name.

Simply put, no, filing these variations are not necessary. Basically, you should file the name as you use it or as you intend to use it. One of the reasons behind registering a trademark is having exclusive rights to your mark within your industry.

Also, the USPTO requires that a specimen be filed in order to obtain trademark registration. The mark as displayed on the specimen must match exactly to the mark displayed on the application. Therefore, filing variations is pointless as you will not be able to prove to the USPTO that you are actively using those variations.

Now the 2nd part of that common question is - does that mean another party can file a variation on my name and receive registration? This question is a bit trickier to answer so let's go over a couple of scenarios to make things a bit clearer.

Example One:

You have a name for your clothing line called Love Letters* and you're not yet in business. You've done your due diligence and had comprehensive research conducted. After learning the name is clear, a trademark application is filed. A couple of weeks later, another company files for LuvLetterz* for clothing & they are also not yet in business. This would likely not go through for a couple of reasons - (1) the similarity in Sound, Appearance and Meaning is very strong between the two names, (2) the industry is common and (3) you filed first.

Example Two:

Let's use the same scenario as above in terms of your company name. Now let's say another company files for Letters of Love* for a line of stationery goods. As long as there are no pending or registered trademarks, the USPTO would likely allow this mark. The main reasoning is that the clothing and paper goods industry are dissimilar enough as not to cause customer confusion. In other words, someone looking for a t-shirt is not going to go to a stationery store and vice versa.

If you have an example you'd like me to analyze, please post a comment here.

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* No claim is made to the ownership, knowledge or liability of the above company names. The above examples are merely for informational purposes and should only be seen as such.

Current Filing Fees at the USPTO

There's a number of forms and fees that must be filed in order to keep & maintain your trademark. It's advised that you keep yourself up to date on these fees during the life of your trademark. Prior to filing a necessary form, check this link to ensure that you'll have the necessary funds in time.

Application for registration, per international class (electronic filing, TEAS application)

325.00

Filing an Amendment to Allege Use under §1(c), per class

100.00

Filing a Statement of Use under §1(d)(1), per class

100.00

Filing a Request for a Six-month Extension of Time for Filing a Statement of Use under §1(d)(1), per class

150.00

Application for renewal, per class

400.00

Filing §8 affidavit, per class

100.00

Filing §15 affidavit, per class

200.00