For apps, the best specimen is a screen capture of the app store listing clearly showing the mark. Opposer attached a printout from the usptos 1 application serial no. Trademark class 42 is a trademark class used by the united states patent and trademark office uspto. Acceptable trademark specimens griggs bergen llp, trademark. Apr 19, 2019 requests registration of the trademark service mark identified above in the united states patent and trademark office on the principal register established by the act of july 5, 1946 15 u. The uspto has imposed various rules and guidelines on what constitutes an acceptable specimen of use. How to meet the commercial use requirement for an app. This attachment is usually required for a section 1a usebased trademark application. A trademark specimen should be a label, tag, or container for the goods, or a. To expand on my colleagues response, class 9 covers retail and downloadable software, class 42 covers computer services including temporary use of nondownloadable. The specimen should show the trademark as it is claimed and used in the trademark application. Jan 14, 2011 to expand on my colleagues response, class 9 covers retail and downloadable software, class 42 covers computer services including temporary use of nondownloadable clientserver software, and class 38 covers a multipleuser access to a global computer network. The uspto treats downloadable software as a class 9 good, and nondownloadable software as a class 42 service, even though the two versions of the software. Trademarkservice mark application, principal register.
Listing too many goods or services on the application. Providing online nondownloadable computer software for use as a cryptocurrency wallet. Uspto posts service marks specimens examination guide. Some of its provisions are frustratingly restrictive for trademark owners, such as prohibitions against accepting advertising materials as specimens of use for marks for goods. The uspto treats downloadable software as a class 9 good, and.
Class 42 is a service that allows software to be used for various purposes. Sep 17, 2015 given that the required petition fee for amending the registration is less than the filing fee for an entirely new us trademark application, this pilot program could be of particular interest to us trademark owners in the software, media, cloud computing, social networking and mobile communications spaces. Thus, the appearance of this term on a servicemark specimen does not, by itself, necessarily mean that the relevant services are not in actual use in commerce or that the. Downloadable software for calculating the value of solar photovoltaic systems. If needed, dont hesitate to consult an expert such as a trademark attorney to ensure you register your trademark with the correct class. This webpage explains the requirement for a specimen of your trademark in certain applications, provides examples of acceptable specimens, explains certain common specimen refusals and how to overcome them, and provides instructions on how to submit a response to certain specimen refusals using the trademark electronic application system teas.
Goods or services providing online nondownloadable software featuring an online booking tool for use by travel agencies and their corporate customers to enable searching and administering travel procurement. Ttab dismisses appeal from specimen refusal because applicant. Be sure that the services of the application have been properly identified. Ttab dismisses appeal from specimen refusal because. The ttab did agree with the examining attorney that the specimen raised some. Specifics on service specimens meeting trademark hurdles. Jan 14, 2019 but because the hashtag is also the name of the software tool, popsugar has a better chance of getting it registered. Foreword trademark manual of examining procedure tmep. Patent and trademark office posted its final version of examination guide 314 on the topic of service mark specimens.
Broadening a us trademark application the usptos new. To be acceptable for trademark registration purposes, a specimen must show the mark as used on or in connection with goods products sold in commerce that is regulated by congress, namely interstate, territorial, and commerce between the united states and a foreign country. Substitute specimen is acceptable due to the following statements. Providing online nondownloadable software for use in clinical trial protocol development in the nature of developing protocols for medical clinical trials and research. Getting this wrong can be costly and timeconsuming. Meeting the use in commerce requirement for a cloudbased. This opinion is not a precedent of the ttab hearing. Class 9 is a software product that can be made and sold separately from other products or services. Providing temporary use of nondownloadable computer software for use in accessing, reading, tracking. Class 42 is a service that allows software to be used for various purposeswith the software tied into the service provider such as a website. Such a specimen is acceptable only if it provides sufficient information to enable the user to download the software from the website. Mark is shown in large font at the top of the webpage and in the middle of the webpage. Keep in mind that specimens for goods differ from specimens for services.
United states patent and t o this opinion is not a trademark. Classes like 9 and 42 are so similar, in fact, that class 9 includes downloadable software while class 42 includes nondownloadable. For cloudbased software or saas, specimens must show the uspto that the. Apr 29, 2014 class 9 is a software product that can be made and sold separately from other products or services. Jan 16, 2020 the board dismissed this appeal from a refusal to register the mark finlistics clientiq for business development consulting services, namely, providing temporary use of nondownloadable software for analyzing, calculating, measuring, modeling, and forecasting business and financial performance, because applicant failed to address the ground for refusal. What is the trademark classification for software to be used. The board dismissed this appeal from a refusal to register the mark finlistics clientiq for business development consulting services, namely, providing temporary use of nondownloadable software for analyzing, calculating, measuring, modeling, and forecasting business and financial performance, because applicant failed to address the ground for refusal. Jan 15, 2020 the board dismissed this appeal from a refusal to register the mark finlistics clientiq for business development consulting services, namely, providing temporary use of nondownloadable software for analyzing, calculating, measuring, modeling, and forecasting business and financial performance, because applicant failed to address the ground for refusal. For downloadable software, copies of the instruction manual and screen printouts from 1 web pages showing the mark in connection with ordering or purchasing.
Data management services for use in debt collection, namely, electronic data collection and online claims management. For example, a specimen could be an advertisement, brochure, website printout or other promotional material which shows your trademark used for the services, business signs. The trademark manual of examining procedure tmep is the official manual of the united states patent and trademark office governing how the office handles trademark. Two recent trademark decisions provide ammunition for. Oct 24, 2017 in an effort to educate our clients, heres a quick primer on what is acceptable to submit as a specimen for a trademark application for services. Trademark examining attorneys will be governed by the applicable statutes, the trademark rules of practice, decisions, and orders and notices issued by the under secretary of commerce for intellectual property and director of the united states patent and trademark office, commissioners, or deputy commissioners. Oct 31, 2014 uspto posts service marks specimens examination guide. Dec 17, 2012 the board likened this case to online retailing cases in which a webpage specimen fails to provide a means for ordering the goods or services.
This opinion is not a precedent of the ttab united states. Ultius provides a web based marketplace for connecting consumers and freelance writers for highquality content. The trademark manual of examining procedure tmep is the official manual of the united states patent and trademark office governing how the office handles trademark applications. A specimen is a means of providing proof of your goods or services to the uspto. For downloadable software, copies of the instruction manual and screen printouts from 1 web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, 2 the actual program that shows the mark in the title bar, or 3 launch screens that show the mark in an introductory. Providing temporary use of nondownloadable computer software for. The board dismissed this appeal from a refusal to register the mark finlistics clientiq for business development consulting services, namely, providing temporary use of nondownloadable. What is the trademark classification for software to be. The trademark manual of examining procedure tmep is the official manual of the united states patent and trademark office governing how the office handles trademark applications and registrations. Two recent trademark decisions provide ammunition for trademark owners who receive improper specimen refusals for service marks. Specimen description excerpts from seminar presentation regarding litigation support services attorney information name patricia l. Specimens of continued use are also required when maintaining or renewing a trademark registration. Selection, trademark clearance, registration, licensing and infringement. Annual report on global specimen solutionss revenue.
A specimen is an example of the trademark used in connection with the goods or services provided to the government. A photocopy or other reproduction of a specimen of the mark as actually used on or in connection with the goods is acceptable. In the past few years, many trademark practitioners have noticed an. How to meet the commercial use requirement for an app trademark.
In an effort to educate our clients, heres a quick primer on what is acceptable to submit as a specimen for a trademark application for services. Ic 042 providing temporary use of online nondownloadable cloud computing software for specify. Providing temporary use of nondownloadable computer software for retirement planning, in class 42. Every registered trademark must have a specimen showing use of the trademark in commerce for the specifically claimed goods or services. Uspto tsdr case viewer united states patent and trademark. What is the difference between class 9 software and class 42. A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods.
The following is a list of trademarks and service marks registered and owned by nikon corporation in the united states, and certain other countries. If your application is a downloadable app as opposed to a nondownloadable. For apps, the best specimen is a screen capture of the app store. Trademark class 42 is a trademark class used by the united states. Providing temporary use of online nondownloadable software for digitizing, enhancing, manipulating, editing, printing, storing, indexing and transmitting images, for ordering of photographic prints and albums over global computer networks, and for ordering and central storage of online photograph albums. Computer software for calculating the value of solar photovoltaic systems.
To be acceptable for trademark registration purposes, a specimen must show the mark as used on or in connection with goods products sold in. The board likened this case to online retailing cases in which a webpage specimen fails to provide a means for ordering the goods or services. For example, a beta version of nondownloadable or downloadable software may be made available to the public for use even though the final version has not been released. Specimen is described as web printout and appears to show the mark used in rendering the services. There are several different ways an applicant can show a specimen for an app. Tsdr help united states patent and trademark office. What is the difference between class 9 software and class.
Annual report on global specimen solutionss revenue, growth. The specimen must show the mark as used on or in connection with the goods in commerce. This sample proves that the company is using the claimed mark in connection and association with its company activities products or services. Since class 42 consists of scientific and technological services rather than goods, you need to submit proof of your services on which the trademark is clearly visible. Software as a service saas services featuring software for transactions using virtual currency, namely, software for managing, buying, selling, storing, transacting, exchanging, sending and receiving virtual currency. Meeting the use in commerce requirement for a cloud.
Uspto posts service marks specimens examination guide lexology. Specimen is described as web printout and appears to show. Oct 26, 2016 software is content or fieldspecific, the field of use this does not include providing online computer games that are played online ic 042 computer software design and development ic 041 nondownloadable publications and game software ic 038 transmission of sound, video and information from web cams, video cameras or mobile phones. Proving commercial use of a cloudbased software platform, web app, saas, or other nondownloadable program that exists solely in the cloud can be tricky. The uspto treats downloadable software as a class 9 good, and nondownloadable. If your program is a software as a service, a webapp, or otherwise has no. The manner of trademark use on a specimen must be such that potential customers would.
For services, a specimen shows the trademark as actually used in commerce with your existing services in a way that directly associates the trademark with the services. Mar 19, 2018 the uspto treats downloadable software as a class 9 good, and nondownloadable software as a class 42 service, even though the two versions of the software may be functionally identical. Providing temporary use of online nondownloadable software. Section 1051a, the applicant is the owner of the trademark service mark sought to be registered. Classes like 9 and 42 are so similar, in fact, that class 9 includes downloadable software while class 42 includes nondownloadable software. Nov 24, 2017 the trademark manual of examining procedure tmep is the official manual of the united states patent and trademark office governing how the office handles trademark applications and. Protocol kickstarter providing online nondownloadable software for use in managing data and information in the field of medical clinical trials and research. Trademark examining attorneys will be governed by the applicable statutes, the trademark rules of practice, decisions, and orders and notices issued by the under secretary of commerce for.
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