Intellectual Property Law

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.

Full post as published by TradeMark Express: A Daily Blog on January 29, 2009 (boomark / email).