Although some beta products may not be made available to consumers, others are. This opinion is not a precedent of the ttab mailed. For downloadable computer software, an applicant may submit a specimen that shows use of the mark on an internet website. Applicant may respond to the stated specimen refusal by submitting a verified substitute specimen or amending the application to an intent to use filing basis under trademark act section 1b by following the suggested directions below for responding either online or by mail. Advertising material is not generally acceptable as a specimen for goods. While this latter section states that a website page that displays a product, and provides a means of ordering the product, can constitute a display. If the software is content or fieldspecific, applicant must also.
On august 18th an individual submitted the specimen below in. The table above shows only a representative sample of performance points. Perhaps thirty years ago it was unheard of for consumers to purchase goods without physically inspecting them. Some software specimens may indicate that the software is a beta version. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and provide the means to order the goods.
For intangible goods, such as downloadable computer software programs, buttons and links for downloading, buying, or ordering goods should be considered sufficient ordering information. Displays associated with goods october 2017 edition of the tmep tmep chapter index chapter 900. Vitis unified software platform user documentation. Because software providers have adopted the practice of applying trademarks that are visible only when the software programs are displayed on a screen, see tmep 904. If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under section 1a to an intent to use basis under section 1b, for which no specimen is required. Usptos trademark post registration division antlike. This is a class 9 software id, and its not clear to me that the software is downloadable the id certainly doesnt recite as much or otherwise immediately purchasable from the specimen web page. The specimen is a printers proof of an advertisement for services. The listserv member knew from experience that if he provided an invoice without any explanation, the trademark specialist would have. This term is commonly used in the software field to identify a preliminary version of a product. The above data is based on johnson controls selection software yorkworks 17. Note that websites can only serve as specimens for goods if there is a pointofsale option that would allow purchasers to immediately order the product.
Trademarks on software during beta testing tom galvani. Response options for overcoming a specimen refusal here are five possible response options for overcoming a specimen refusal. There must be an offer to accept orders or instructions on how to place an order. We frequently handle softwarebased patent and trademark applications. If the website simply advertises the software without providing a way to download, purchase, or order it, the specimen is unacceptable. Response options for overcoming a specimen refusal. A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods. Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. A webpage submitted as a specimen must include the url. A trademark specimen must be submitted to the principal register, according to the trademark manual of examining procedure tmep 904. Specimens for sound marks october 2017 edition of the tmep tmep chapter index chapter 900. This examination guide addresses examination of webpage specimens as displays associated with the goods. Changes to specimen requirements i think perhaps its time for the pto to reexamine its requirement that specimens must be in the form of labels and tags, etc.
The board gets it right the placement of the mark isnt acceptable for software pointofpurchase but for the wrong reasons. The presence of these features conveys the web pages pointofsale character. The specimen does not show use of the appliedfor mark on or in connection with any of the relevant goods or in the sale or advertising of the services. However, if examination of the specimen indicates that the beta version is not in actual use in commerce, the examining attorney must refuse registration because the applicant has not provided evidence of use of the appliedfor mark in commerce. Specifically, the guide describes the requirements for an acceptable webpage display specimen, discusses the analytical framework for determining the acceptability of a webpage display, identifies the appropriate refusals, and provides examples. Material not appropriate as specimens for trademarks october 2017 edition of the tmep tmep chapter index chapter 900. Unfortunately for this applicant, his specimen shows the goods, not the mark. Office action united states patent and trademark office. For services, upload an advertisement showing the mark being used to promote the service. The manual contains guidelines for examining attorneys and. A webpage for downloadable software with no means to download or purchase the software.
Material appropriate as specimens for trademarks previous. Similarly, a specimen for audio recordings in class 9 that shows use of the mark on an internet website must include a download or similar link to put the consumer on notice that the identified goods are available for download. Along with a trademark application for a sound mark, an applicant must submit a specimen that contains a sufficient portion of the audio or video content to show how the mark is used on or in connection with the goodsservices. In that case, an acceptable specimen might be a printout of a display screen that creates an association between the mark and software and provides sufficient information to enable the user to download or purchase the software from the webpage having the mark. Test your ttab judgeability on this trademark specimen of use. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.
Cafctrademark specimen of use for website need not. As such the board held that the specimen cannot be considered as a display establishing a ready connection between the mark and the goods and affirmed the examining attorneys refusal to register the mark. There are specific requirements as to what is acceptable as a trademark specimen and in what format they. The manual is published to provide trademark examining attorneys in the uspto, trademark applicants, and attorneys and representatives for trademark applicants with a reference work on the practices and procedures relative to prosecution of applications to register marks in the uspto. Websites can also be good specimens so long as the identified goods are displayed in close conjunction with the mark and there is a means for ordering the goods. On march 6, 2018 the uspto announced that it has started a pilot program that makes it easy to report specimens that have been digitally created, altered or fabricated. An application based on trademark act section 1a must include a specimen showing the appliedfor mark as actually used in commerce for each international class of goods and services identified in. The tmep states two very useful exceptions to that rule, however. Sample result of dmatest on an alveo u200 data center accelerator card. The substitute specimen was in use in commerce at least as early as the application filing date. However, the mere inclusion of a phone number, internet address andor mailing address on an advertisement describing the product is not in itself sufficient to meet the criteria for a display associated with the goods. Software as a service and digital technology services require a very specific type of specimen of use. The following matters may not be changed by examiners amendment.
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