Because so many companies market
their goods and services online, owners and management naturally expect that their
branded websites will be good specimens to support their applications for
trademark registration and extensions. Websites are usually excellent and
appropriate demonstrations of the use of a trademark.
But, companies are well-advised to use extra care when submitting a website sample as a supporting specimen for trademark registration; the USPTO’s examination of them is especially exacting. If it finds the specimen insufficient, the consequence may be long delays in the application process and possible rejection of the mark.
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But, companies are well-advised to use extra care when submitting a website sample as a supporting specimen for trademark registration; the USPTO’s examination of them is especially exacting. If it finds the specimen insufficient, the consequence may be long delays in the application process and possible rejection of the mark.
Read the rest of this post here...
As background, trademarks are intended to
protect consumers from confusion about the source of goods and services. US
trademark registration is based on use in
interstate commerce, and requires a declaration that a mark is in actual use
in order to entitle a would-be trademark holder to final registration. To demonstrate
use in commerce, applicants submit samples showing the brand being employed to
actually sell, or offer for sale, the goods or services in question. An appropriate
specimen for goods might be a product’s packaging or a point of sale display showing
the mark affixed to or next to a product and the price at which it is offered
to consumers. For services, a brochure or advertisement might describe a
company’s service, its pricing structure and how the service is contracted for.
Applicants must take heed that
the USPTO applies not only a “commerce,” but also an “interstate commerce”
requirement. Worldwide websites often seem the obvious solution to the
requirement that a specimen show use in multiple states. But according to
recent guidelines
released by the USPTO, websites will only suffice under certain fairly defined
circumstances.
First, the sample must contain
either a picture or textual description of the goods or services offered. Also,
if the website is intended to demonstrate use of the mark for goods or services
in several classes of use, i.e. kitchen equipment (Class 21), aprons (Class 25),
and cooking classes (Class 41), each
class must be represented in the specimen provided.
A shot from American Apparel's homepage showing their mark, goods associated with it, and a link to order them. |
Second, the mark must be prominently displayed in the
website specimen on or next to the associated goods or services. What does
prominently mean? Applicants should
ensure that the website distinguishes the mark from surrounding text by using a
different font, stylization, color, or position. The mark should look like a brand for the goods or services.
Finally, the web specimen should provide the information necessary to purchase the goods or
services. This typically includes their price as well as a method for ordering
them, such as a 1-800 number, an order form, or “checkout” button.
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