July 15, 2019

July 15, 2019

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July 12, 2019

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USPTO Posts Service Marks Specimens Examination Guide

Earlier this fall, the U.S. Patent and Trademark Office posted its final version of Examination Guide 3-14 on the topic of Service Mark Specimens. Among other things, this guide reviews the requirements for service mark specimens, discusses issues that frequently arise in the examination of service mark specimens, considers specimens that are commonly submitted in connection with modern technology-related services and, most helpfully, provides numerous examples of acceptable service mark specimens. Although the guide focuses on service marks for computer-related technologies, the examination principles are generally applicable to all service marks.

The following are just some of the guide's points that are helpful to secure acceptance of an Allegation of Use or to avoid a specimen refusal:

  • Provide a specimen and description that explains what the specimen is and how the services are rendered. E.g., "specimen is a screenshot from a hand-held mobile device showing the mark as used with online social networking services."

  • Be sure that the services of the application have been properly identified. E.g., medical billing services (in Class 35) versus providing non-downloadable software for medical billing (in Class 42). Similarly, use of a social networking page to advertise, say, cleaning products should not be misidentified as online social networking services.

  • Provide sign-in or launch screens that place the mark squarely in the context of the services that are rendered. This is particularly important for the service of providing non-downloadable software. If services are not clear from the sign-in or launch screen, provide an explanation or several screens, which, when considered together, convey a "proper nexus" between the mark and the services.

  • If your specimen is less than ideal, consider declarations or industry-related periodicals to evidence how marks and services are similarly promoted or rendered in the relevant industry, or provide other information on the nature, content, and context of use of the specimen.

The full text of Examination Guide 3-14 can be found here.

© 2019 Sterne Kessler


About this Author

Tracy-Gene Durkin, Mechanical Patent Trademark Attorney, Sterne Kessler law firm

Ms. Durkin leads the Mechanical Patent and Trademark Group.  With over twenty years of experience obtaining and enforcing intellectual property rights, she melds her expertise with utility and design patents, trademarks, and copyrights to create a unique IP protection strategy to meet her clients' individual needs.  Ms. Durkin’s experience includes helping clear new products and trademarks for use in the marketplace, selecting appropriate IP protection, and enforcing such protection through mediation, litigation and licensing.  She is sought out for her knowledge of...

Ivy Clarice Estoesta, Mechanical Design Attorney, Sterne Kessler Law Firm

Ms. Estoesta is an associate in the Mechanical and Design practice group at Sterne Kessler.  Ms. Estoesta’s practice focuses on trademarks, design patents, and copyrights.  Her legal experience, which began at the firm, and academic background provide her a multidimensional perspective in securing comprehensive IP rights for an array of clients in various industries, including pharmaceuticals, dietary food and beverages, footwear, electronic devices, and household cleaning products.

Ms. Estoesta joined the firm in 2006 as a legal assistant in the Biotechnology/Chemical practice group.  Her combined interest in science and art drew her to the firm’s Mechanical and Design practice, and she formally transitioned to the firm’s Mechanical and Design practice group as a legal assistant in 2007.  At that time, Ms. Estoesta’s practice focused exclusively on trademarks, and she assisted with the prosecution and maintenance of U.S. and foreign trademark rights.  Subsequently, Ms. Estoesta transitioned to a Student Associate in 2008, during which she gained significant experience in clearing, prosecuting and enforcing trademark rights in the U.S. and abroad.  To date, Ms. Estoesta has more than 5 years of experience in drafting opinions on trademark registerability and infringement, cease and desist letters, trademark applications and other communications filed with the U.S. Patent & Trademark Office and various foreign offices.  She also has experience in Oppositions and Cancellations before the U.S. Trademark Trial and Appeal Board. 

Julie D. Shirk, Patent & Trademark Specialist, Sterne Kessler Law Firm
Patent & Trademark Specialist

Julie D. Shirk joined Sterne Kessler in 1989 and continues to specialize in patents and trademarks in the firm's Mechanical Group.

Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm

Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement. 

Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing “her broad IP savvy...