Specimens

To register your trademark with the U.S. Trademark Office, you have to submit a “specimen” showing:

  • the trademark
  • used on or in connection with
  • the goods or services.

Lots of people find specimens confusing. Let’s see if I can help with that.

Specimens of things you can touch are pretty straightforward: You submit a picture of the thing or the thing’s package. The picture above has images that could work as specimens for 34 different trademarks.*

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But what kind of specimen does the Trademark Office want for something you can’t photograph, like computer software?

We used to submit pictures of the disc. Here’s the specimen submitted by AOL for software in 2006.

Today, most software is either downloaded or SaaS, so what do we use now?

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To the right is an excellent specimen for the trademark QUICKBOOKS for SaaS:

  • QUICKBOOKS is clearly visible.
  • It’s a sign-in page so it shows “use.”
  • It’s clear that QUICKBOOKS is a trademark for SaaS.

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Here’s an excellent specimen for ZYNGA for downloadable software:

  • The word ZYNGA is clearly visible.
  • It’s an actual screen shot from a phone so it shows “use.”
  • It’s clear this is a mobile software app.

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This is NOT an acceptable specimen for KISI for software. The trademark KISI doesn’t appear anywhere.

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This is NOT an acceptable specimen for MINECRAFT for software:

  • It’s not clearly in “use”. This could just be an ad for a game that’s going to be released next month.
  • It’s not clear it’s software. This could be a board game.

You gotta have all three: The trademark; in use; for the goods and services in your application. If you’re missing any one of those requirements, it won’t work as a specimen.

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*Here’s the list.

  • Revlon® for hairbrushes
  • Aveeno® in plain font for skin lotion
  • Aveeno® in stylized font for skin lotion
  • Active Naturals® for skin lotion
  • Scotch® for tape
  • The tartan pattern used by Scotch brand
  • Magic™ used by Scotch brand
  • 3M® (on the Scotch brand tape dispenser)
  • KleenEARTH® in plain font for scissors
  • KleenEARTH® in stylized font for scissors
  • The “W with an arrow through it” logo for scissors
  • iPhone® for mobile phones
  • Semikolon® for paper products
  • Amarelli® in plain font for candy
  • Amarelli® in stylized font for candy
  • Amarelli® in a different stylized font for candy
  • Quartet® for markers
  • Artgum® in plain font for erasers
  • Artgum® in stylized font for erasers
  • Prismacolor® for erasers
  • Expo® in plain font for markers
  • Expo® in stylized font for markers
  • Pentel® in plain font for erasers
  • Pentel® in stylized font for erasers
  • Hi-Polymer® for erasers
  • Mead® for envelopes
  • Paperpro® for staplers
  • Bobino® for cord holders
  • Swingline® in plain font for hole-punchers
  • Swingline® in stylized font for hole-punchers
  • Krazy® for adhesives
  • Gold® for batteries
  • Leatherman® for tools
  • Quartet® for erasers

If I had been more careful with way I oriented the stuff, there would have been 6 more:

  • Bic® in plain font for markers
  • Bic® in stylized font for markers
  • Quartet® for markers
  • Enduraglide® for markers
  • Twinings®  in plain font for tea
  • Twinings® in stylized font for tea

 

Be Careful What You Argue

When Pat McDonagh started a chain of burger joints in Ireland, he called them SUPERMAC’S after the nickname he earned when he played soccer.

If you want a SUPERMAC’S burger and chips you have to go to Ireland because, so far, McDonald’s has argued that SUPERMAC’S is “confusingly similar” to BIG MAC to keep the chain from expanding.[1]

That might be changing. In April 2017 Supermac’s filed to cancel McDonald’s BIG MAC registration.[2]

McDonald’s submitted a variety of evidence[3] to show that it had been using BIG MAC but the three-judge panel of the Cancellation Division was not impressed[4] and concluded that “the documents [submitted by McDonald’s] do not provide conclusive information that the products marked with [BIG MAC] are offered for actual sale . . ..”[5]

The panel revoked McDonald’s BIG MAC trademark registration[6] and ordered McDonald’s to pay all the costs.[7]

When I read a story like this, I see McDonald’s shooting itself in the foot. Trademark owners need to protect their trademarks, but sometimes trademark owners overreach and find themselves trapped by their own unqualified argument that someone else’s trademark is confusingly similar to theirs.

McDonald’s can’t now argue that BIG MAC isn’t confusingly similar to SUPERMAC’S because McDonald’s is already on record in the opposition it filed saying that it is.

Supermac’s and McDonald’s will probably agree to each allow the other to use and register its trademark. That should have happened in 2014 but McDonald’s needed to have its nose bloodied before it would play nice.

 

Huge shout out to Rebecca M. for sending me an article that led to this post.

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Photo credit: Galway – Rosemary Ave – Supermac’s
© 
2012Joseph Mischyshyn cc-by-sa/2.0 – geograph.org.uk/p/3024899

[1] In March 2014 Supermac’s Holdings Ltd filed an application to register SUPERMAC’S for, among other things, hamburgers and restaurant services. McDonald’s International Property Company, Ltd opposed the application and won the opposition.

[2] McDonald’s was granted a registration for BIG MAC in the European Union in December 1998. In the European Union, a trademark registration can be cancelled if the owner can’t prove use in the five-year period before the cancellation request was filed.

[3] Here’s the description of the evidence that McDonald’s submitted:

  • 3 affidavits, signed by representatives of McDonald’s companies in Germany, France and the United Kingdom. They claimed significant sales figures in relation to ‘Big Mac’ sandwiches for the period between 2011 and 2016 and attach examples of the packaging of the sandwich (boxes), promotional brochures and what appear to be menus, further referred to below:
  • Brochures and printouts of advertising posters, in German, French and English, showing, inter alia, ‘Big Mac’ meat sandwiches; and packaging for sandwiches (boxes); the materials appear to originate from the EUTM proprietor and are dated between 2011 and 2016. The brochures and posters show a sandwich on the menu along with other products, or on its own, and the prices are also provided on some of the materials; other documents appear to be blank menus in which the price can be filled in. The EUTM appears on the submitted material in relation to sandwiches.
  • Printouts from the websites mcdonalds.de, mcdonalds.at, mcdonalds.be, mcdonalds.cz, mcdonalds.dk, mcdonalds.es, mcdonalds.fi, mcdonalds.fr, mcdonalds.hu, mcdonalds.ie, mcdonalds.it, mcdonalds.nl, mcdonalds.pl, mcdonalds.ro, mcdonalds.se, mcdonalds.si, mcdonalds.sk, mcdonalds.co.uk,
    dated between 07/01/2014 and 03/10/2016. They depict a variety of sandwiches, inter alia ‘Big Mac’ sandwiches, some of which state that they are sandwiches made with beef meat.
  • A printout from en.wikipedia.org, providing information on ‘Big Mac’ hamburger, its history, content and nutritional values in different countries.

Decision on Cancellation No. 14 788 C (Revocation), Supermac’s (Holdings) Ltd v. McDonald’s International Property Company, Ltd. (2019), p. 3.

[4] Here’s what the Decision on Cancellation said about each of the types of evidence:

The Affidavits

  • “As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.
  • “However, this does not mean that such statements do not have any probative value at all.
  • “The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging, etc.) or evidence originating from independent sources. In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the content of the affidavits is supported by the other items of evidence.”

Decision at p. 4.

The Websites

  • “Consequently, the presence of the trade mark on websites can show, inter alia, the nature of its use or the fact that products or services bearing the mark have been offered to the public. However, the mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided.
  • “In particular, the value of the internet extracts in terms of evidence can be strengthened by evidence that the specific website has been visited and, in particular, that orders for the relevant goods and services have been made through the website by a certain number of customers in the relevant period and in the relevant territory. For instance, useful evidence in this regard could be records that are generally kept when operating a business web page, for example, records relating to internet traffic and hits attained at various points in time or, in some cases, the countries from which the web page has been accessed. Neither of these, however, was provided by the EUTM proprietor.
  • “Although some of the printouts of the proprietor’s web pages exhibit sandwiches (the prices are not provided), some of which marked with the EUTM, it could not be concluded whether, or how, a purchase could be made or an order could be placed. Decision on Cancellation No 14 788 C page: 5 7 of Even if the websites provided such an option, there is no information of a single order being placed. Therefore, a connection between the EUTM proprietor’s websites (irrespective of the used country code top-level domains and languages) and the eventual number of items offered (sold) could not be established.”

Decision pp. 4-5.

The Brochures, Advertising, and Menus

“Indeed, although the submitted packaging materials and brochures depict the EUTM, there is no information provided about how these brochures were circulated, who they were offered to, and whether they have led to any potential or actual purchases. Moreover, there is no independent evidence submitted that could show how many of the products for which the packaging was used (if that is the case) were actually offered for sale or sold.”  Decision p. 5.

The Wikipedia Printout

“As far as the printout from en.wikipedia.org is concerned, it is noted that Wikipedia entries cannot be considered as a reliable source of information, as they can be amended by Wikipedia’s users and therefore these could only be considered relevant as far as they are supported by other pieces of independent concrete evidence.”  Decision at p. 5

[5] “Taking into account the submitted evidence as a whole, it is concluded that the documents do not provide conclusive information that the products marked with the EUTM are offered for actual sale, as there is no confirmation of any commercial transactions, either online, or via brick-and-mortar operations. Even if the goods were offered for sale, there is no data about how long the products were offered on the given web page or in other ways, and there is no information of any actual sales taking place or any potential and relevant consumers being engaged, either through an offer, or through a sale. Finally, as far as the relevant services are considered, there is no single piece of evidence that refers to any of the registered services being offered under the EUTM.”  Decision at p. 5

[6] “It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods and services for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.”  Decision at p. 6.

[7] Decision at p. 6.

Here’s a link to the decision.

 

FUCT, Reprise

This is a special edition of the Bee Blog to convey some breaking news.

There’s a statute that says which trademarks can’t be registered. Here’s what part of it says:

“No trademark . . .  shall be refused registration . . . unless it— . . . [c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . .  persons . . .”

Back in 2017, the United States Supreme Court ruled that it was unconstitutional to refuse to register a trademark because it’s disparaging. Because of that ruling Simon Tam was allowed to register THE SLANTS for an Asian rock band.46051501_01

The U.S. Court of Appeals for the Federal Circuit recently used the Tam decision to support it’s ruling that it’s also unconstitutional to refuse to register a trademark because it’s immoral or scandalous. That a victory for Erik Brunetti and his trademark FUCT.

That means lots and lots of applications to register will be moving forward. The Queen Bee will definitely be following their progress.