Recovery Project Logos Revealed

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Specimens of Use for Trademarks

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

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 that the mark is tied to the good.

In regard to trademarks, this can be accomplished several ways: "a label, tag, or container for the goods, or a display associated with the goods."

1) The Hanes clothing line has been in existence since 1901. One of the specimens they've provided for one of their many trademarks is a photograph of the tag printed on to their t-shirts. Check it out here.

2) Cover Girl is another well known American business, operating since 1958. One of the specimens they've provided over the years falls into the 'container' category, specifically the packaging lipstick comes in. You can see it here.

While there are only four ways mentioned in the USPTO's somewhat generic quote regarding acceptable specimens, there are several others that are within acceptable limits as well:

• Stampings, whether it be metal, rubber or inked on.

• Catalogs as long as it passes a three-fold test – a picture of the goods, shows the mark near the picture of the goods and provides ordering information, be it an order form, phone number, etc.

• An electronic display aka a web page. The same three-fold test that applies for catalogs is in play here.

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What is NOT a Trademark?

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

Here are just a couple of examples. If there's something that you're not sure can be protected by a trademark, shoot me a line: Shannon@tmexpress.com

1) Trade Name

It can be easy to confuse trademarks and trade names so let's get into some detail here. "The terms 'trade name' and 'commercial name' mean any name used by a person to identify his or her business or vocation," is the USPTO provided definition.

Now, a name can be both a trade name AND a trademark. The USPTO determines this based on the specimen.

Here are a couple of examples to illustrate this:

a) "It is our opinion that the foregoing material reflects use by applicant of the notation 'UNCLAIMED SALVAGE & FREIGHT CO.' merely as a commercial, business, or trade name serving to identify applicant as a viable business entity; and that this is or would be the general and likely impact of such use upon the average person encountering this material under normal circumstances and conditions surrounding the distribution thereof."

This means that Unclaimed Salvage & Freight Co. did not or could not show how that name was creating an impression outside of being just the name used to conduct their services.

b) "'LYTLE' is applied to the container for applicant’s goods in a style of lettering distinctly different from the other portion of the trade name and is of such nature and prominence that it creates a separate and independent impression."

This means that Lytle Engineering & Mfg. Co. provided a specimen that clearly showed Lytle, alone, as being unique and distinctive from their trade name, Lytle Engineering & Mfg. Co.

2) Ideas

When folks call asking how to protect their ideas, they're talking about this definition: "any conception existing in the mind as a result of mental understanding, awareness, or activity." This is worth noting because many people express confusion over the concept of ideas when it comes to intellectual property.

Let me provide a couple examples I've heard over the years.

a) "I've got this idea for a clothing line and want to protect it." Now clothing is clothing; there's really nothing new there. Yes, patterns can be unique from one designer to another. If that's the case, look into copyrights.

However, 9 times out of 10, what the person is really saying is that they have an idea based around a brand. This typically means they have a name & logo, which falls into the trademark category.

b) "I've got an idea for a new product." This as well as ideas to significantly improve an existing product is more than likely going to fall into the patent category.

Intangibilities cannot be protected but the various representations of your ideas may be protected be it with a patent, a trademark, a copyright or a combination of two or more.

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What is a Trademark?

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, therefore, they technically hold a service mark / trademark combination. Where folks get confused when it comes to trademarks is mistaking products or goods for services. Let's take a look at the USPTO's criteria for determining what is or isn't a trademark.

The term "trademark" includes any word, name, symbol, or device, or any combination thereof-

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Essentially, one can take this to mean that the owner of the trademark is either 1) CURRENTLY selling the product in association with the word, name, symbol or device in 2 or more states, OR 2) WILL, in the future, be selling the product in association with the word, name, symbol or device in 2 or more states.

This can be translated to: you must sell a product, displaying the word, name, symbol, or device, which is your UNIQUE product. For example, in the instance of clothing, you can not purchase a Hanes® tshirt and merely print a name across the front and call that your UNIQUE product. The USPTO would consider that shirt a product of Hanes® that you have merely made ornamental.

In the case of either trademark or service marks, keep in mind that merely displaying the symbol next to the word, name, symbol, or device does not create or denote any level of protection unless the application has been filed: "The presence of the letters 'SM' or 'TM' cannot transform an otherwise unregistrable designation into a mark."

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