Frequently asked questions about trademarks

Trademark Pro Design Search App

Trademark Pro became a design trademark search app at the 2018 Global Legal Hackathon.

The team formed at the Toronto location of the Global Legal Hackathon at Denton’s law offices.

Trademark Pro’s video entry for round two of the Global Legal Hackathon:

 

David Michaels, Brand Consultant

  • T-shaped Professional: Has deep knowledge in trademarks with broad education and experience in AI, business law, business management, eCommerce, engineering, entrepreneurship, HR, litigation, marketing, marketing research, patents, programming, SEO, video, and web design.
  • An entrepreneur and brand owner, building eCommerce websites, and designing innovative tech and food products.
  • Worked in the areas of patent, trademark, and corporate law for 23 years:
    Registered hundreds of trademarks, and prepared more than 40 patent applications, from the laser level to muscle building food supplements to computer and Internet-based business methods. David has also litigated trademark infringement cases in US and Canadian federal courts.
  • David Michaels’ Linkedin Profile
  • David Michaels Twitter

Jüri Sildam, Data Scientist

• Worked on different aspects of data acquisition, collection, organization, processing (incl. statistical), physical and mathematical modeling in underwater acoustics, remote sensing, and oceanography.
• Recent breakthroughs in machine learning applications such as deep learning have motivated to continue with the learning, development, and application of these methods to problems, the solutions to which up to now have been dominated by the approaches relying only on well understood physical principles.
• Core Competencies: applications of cutting edge techniques to applied projects, data analysis, programming (e.g. Python, Matlab) , deep neural networks, natural language processing, presentation and communication skills.
• Doctorate of Philosophy – Physical and Mathematical Sciences; Master of Science – Physical Oceanography

 

David Dao

He has worked as a business intelligence developer for three years. He helps organizations manage and leverage their data to generate business value. David Dao advocates for greater access of information and open data.

Trademark Pro Slide Deck

Trademark Search Tools

A survey of trademark lawyers shows that their favorite trademark search tools are:

uspto.gov/Trademark Search

Manual/straightforward searches on TESS
Reason: To save money

Nuans Trademark Search

Pro:

  • A comprehensive Canadian trademark search showing images, goods and services, and owners.
  • At $50 per search, it is very affordable.
  • Turnaround time is usually under a couple of hours.
  • See if someone has a convention priority date that may file in the USPTO

Con: It only searches the Canadian trademarks database.

Markify

Quick preliminary and comprehensive searches when I need to outsource or am short on time

Trademark Now

Pro: AI Knockout searches with probability scores
Con: Expensive, even with multiple pricing options for a sole practitioner
$10,000+ USD flat-rate annual subscription fee
$1000 per year plus $149 per search with up to 5 countries (including US) or about $449 per search for more than 5 countries

Compumark Trademark Search Engine

Pro: Thorough trademark search
Con: Expensive: $780 for a full US standard character search
It takes a long time to go through all of the listings. Typical reports are 500 to 1000 pages.

Corsearch

Pro: Thorough trademark search
Con: Expensive

ActiveIP

No information on pros and cons
Owned by CSC Global
 
 

IP Boot Camp: Trademarks


Sonia Lakhany discusses the importance of trademarks and freedom to operate searches.

Trademark Search Recommendations:

  • Do a “knockout search” is a quick search conducted to make sure there are no exact or near-exact matches in the PTO database. It usually only takes a few minutes.
  • File a proposed use application before using the trademark. It takes 3 to 4 months to get a response
  • For a startup in slow mode, with no upfront investment, do a quick USPTO search on TESS.
  • For a business investing in signage, marketing, etc., spend the money and get a freedom to use trademark search

It’s not just a question of wasting a client’s time and money–it’s potentially a malpractice issue if you don’t do a proper clearance search. If a client has invested significant time and money in a mark, and then has to change the mark to something new, they are naturally going to be looking for someone to blame.
 

What is a Trademark?

The 1946 Lanham Act defines a trademark under the term “trade-mark.” A trademark includes any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others.
Today, a mark is considered a trademark in many jurisdictions if it is a recognizable word, design, symbol, sound, or expression that identifies products or services of a particular source from those of others. A trademark may appear as a label, a name, a signature, a group of words, one or more letters, one or more numbers, the shape of goods, a packaging design, a combination of colors, a smell, a sound or jingle, or any combination thereof which is capable of distinguishing goods and services of one business from those of others. It must be capable of graphical representation and must be applied to goods or services for which it is registered.
Trademarks used to identify services are usually called service marks.
A trademark may be shown with a trademark symbol, such as ™ , ℠ , or ®.
A trademark may be owned by an individual, a corporation, or any legal entity. A trademark may be displayed on a package, a label, a hangtag, a voucher, or on the product itself. For the sake of corporate identity, trademarks are often displayed on company buildings.

Types of Trademarks in the USA:

There are four types of trademarks in the USA:

  1. Trademarks registered on the Federal USPTO Principal Register,
  2. Trademarks registered on the Federal USPTO Supplemental Register,
  3. Trademarks registered in one or more state trademark registers, and
  4. Unregistered, common-law trademarks.

15 U.S. Code Chapter 22 – Federal Trademarks

Lanham Act, section 2: 15 U.S. Code § 1052 – Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
(b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.

(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.

(e) Consists of a mark which:
(1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them,
(2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title,
(3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them,
(4) is primarily merely a surname, or
(5) comprises any matter that, as a whole, is functional.
(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant’s goods in commerce before December 8, 1993.

mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.
(July 5, 1946, ch. 540, title I, § 2, 60 Stat. 428Pub. L. 87–772, § 2, Oct. 9, 196276 Stat. 769Pub. L. 93–596, § 1, Jan. 2, 197588 Stat. 1949Pub. L. 100–667, title I, § 104, Nov. 16, 1988102 Stat. 3937Pub. L. 103–182, title III, § 333(a), Dec. 8, 1993107 Stat. 2114Pub. L. 103–465, title V, § 522, Dec. 8, 1994108 Stat. 4982Pub. L. 105–330, title II, § 201(a)(2), (12), Oct. 30, 1998112 Stat. 3069, 3070; Pub. L. 106–43, § 2(a), Aug. 5, 1999113 Stat. 218Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], Nov. 29, 1999113 Stat. 1536, 1501A–583; Pub. L. 109–312, § 3(a), Oct. 6, 2006120 Stat. 1732.)

Can You Trademark a Mark that is Functional?

No, functional trademarks can not be registered because of section 2(e)(5) of the Lanham Act. To determine whether a mark is functional, an examiner considers of one or more of the following factors, commonly known as the “Morton-Norwich factors”:

  • (1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
  • (2) advertising by the applicant that touts the utilitarian advantages of the design;
  • (3) facts pertaining to the availability of alternative designs; and
  • (4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

In re Becton, Dickinson & Co., 675 F.3d 1368, 1374-75, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-1341, 213 USPQ 9, 15-16 (C.C.P.A. 1982)

It is not necessary to consider all the Morton-Norwich factors in every case. The Supreme Court held that “[w]here the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature.” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001). see also In re Loggerhead Tools, LLC, 119 USPQ2d 1429, 1434 (TTAB 2016) (finding that the first two Morton-Norwich factors established that applicant’s applied-for mark is functional, before considering the remaining factors). Moreover, there is no requirement that all four of the Morton-Norwich factors weigh in favor of functionality to support a refusal. See Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002) (“once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs”); In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042 (TTAB 2013) (finding the flavor peppermint functional for nitroglycerin lingual spray based on evidence that peppermint oil, which imparts a flavor of peppermint, can improve the effectiveness of sublingual nitroglycerin spray); In re Udor U.S.A., Inc., 89 USPQ2d 1978 (TTAB 2009) (affirming the functionality refusal of “a round disk head on a sprayer nozzle” where the third and fourth factors showed that applicant’s competitors manufactured and marketed spray nozzles with similar features, the shape was preferred in the industry, and it appeared efficient, economical, and advantageous, even though applicant’s utility patent and advertising did not weigh in favor of functionality); In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (holding orange flavor for pharmaceuticals to be functional based on applicant’s touting of the utilitarian advantages of the flavor and the lack of evidence of acceptable alternatives, even though the mark was not the subject of a patent or patent application and there was no evidence that the flavor affected the cost of the product); In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001) (finding that since there was no utility patent, and no evidence that applicant’s guitar configuration resulted from a simpler or cheaper method of manufacture, these factors did not weigh in Board’s decision).

Can You Trademark a Motion Image?

It is rare to find a valid trademark of a motion image. An applicant may be able to register a series of motion images as a trademark if they are distinctive and not functional.
In 2016, the TTAB determined that an applicant’s “motion mark” of a gripping, in-and-out movement of the jaws of a hand tool was functional under Section 2(e)(5) and therefore it was not registrable.  In re Loggerhead Tools, LLC, 119 USPQ2d 1429 (TTAB 2016) [precedential].
Wrench images in a motion trademark application
The applicant advertised the utilitarian advantages of the tool. The applicant also had both a utility patent and a design patent for the tool. Even though Loggerhead’s utility patent for an “Adjustable Gripping Tool” and its design patent for a “Hydrant Tool,” did not cover the motion described in the trademark application, there was a “strong conclusion” that the utility patent’s disclosure of the utilitarian advantages of the proposed mark indicated functionality.
 

Does a pseudo mark change the rights of a trademark owner?

What is a pseudo mark?

A pseudo mark is a plain English spelling of a phonetic trademark that comprises a misspelled word, a number, or telescopic trademark. A pseudo mark works like search tag and it is added to the USPTO database to make some trademarks more searchable. A pseudo mark may also discourage infringing trademark application filings.

For some marks, the USPTO has added a pseudo mark to the search data to assist users in identifying relevant marks related to their search term.  The “pseudo mark” field, which is not displayed, often contains spellings that are very similar or phonetically equivalent to the word mark.  For example, if “4U” appears in the mark, the term “for you” would be added to the pseudo-mark field.  This provides an additional search tool for locating marks that contain an alternative or intentionally corrupted spelling for a normal English word.  Pseudo mark entries are not displayed or printed in the search results and are not part of the official application or registration.

TMEP 104 Trademark Searching

Does a psuedo mark change the rights of a trademark owner?

No, not usually. But a pseudo mark helps put others on notice about a trademark.
If I search for “FOR YOU,” results that include “4U” will show up, but not the other way around. Pseudo mark entries are not displayed or printed in the search results and are not part of the official application or registration.
A trademark is often considered confusingly similar if it sounds the same as another non-identical mark. So in the above example, the trademark “4U” would usually be confusingly similar to the term “for you,” if they were being used for the same goods or services sold in the same channels of trade.
In the following telescopic trademark BOBFORYOU, it has the  PSEUDO MARK: BOB FOR YOU. The examiner sent the applicant the following Notice of PSEUDO MARK:


From: TMDesignCodeComments
Sent: Friday, August 26, 2016 06:52 AM
To: brand.register @ foxmail.com
Subject: Official USPTO Notice of Pseudo Mark: U.S. Trademark SN: 87146000: BOBFORYOU (Stylized/Design)

Docket/Reference Number:  U.S. Trademark SN: 87146000


The USPTO may assign pseudo marks, as appropriate, to new applications to assist in searching the USPTO database for conflicting marks.  They have no legal significance and will not appear on the registration certificate.
A PSEUDO MARK may be assigned to marks that include words, numbers, compound words, symbols, or acronyms that can have alternative spellings or meanings.  For example, if the mark comprises the words ‘YOU ARE’ surrounded by a design of a box, the pseudo mark field in the USPTO database would display the mark as ‘YOU ARE SQUARE’.  A mark filed as ‘URGR8’ would receive a pseudo mark of ‘YOU ARE GREAT’.Response to this notice is not required; however, to suggest additions or changes to the pseudo mark assigned to your mark, please e-mail TMDesignCodeComments@USPTO.GOV.  You must reference your application serial number within your request.  The USPTO will review the proposal and update the record, if appropriate.  For questions, please call 1-800-786-9199 to speak to a Customer Service representative.The USPTO will not send any further response to your e-mail.  Check TESS in approximately two weeks to see if the requested changes have been entered.  Requests deemed unnecessary or inappropriate will not be entered.To view this notice and other documents for this application on-line, go to http://tdr.uspto.gov/search.action?sn=87146000.  NOTE: This notice will only be available on-line the next business day after receipt of this e-mail.Pseudo marks assigned to the referenced serial number are listed below.
PSEUDO MARK:
BOB FOR YOU
USPTO trademark search "for you" results

USPTO trademark search “for you” on April 2, 2017

Trademark Symbol

Businesses use a trademark symbol next to their marks to indicate that they claim rights in a trademark.

What is the trademark symbol?

Businesses use the following trademark symbols as a superscript to the right of their trademark: TM, SM and ®

  • The TM symbol stands for “trademark.” It is used to alert the public about your claim to the trademark, regardless of whether you have filed an application to register the trademark in connection with goods.
  • The SM stands for “service mark.” It is a designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO, in connection with services.
  • The R symbol ® indicates that the trademark is registered federally with the USPTO or the PTO of another country.

May I use the federal registration symbol ® before the USPTO issues my trademark registration?

  • The USPTO says that: You may use the federal registration symbol ® only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration in the USA.
  • Before registration, you may only use the ™ symbol or the service mark ℠ symbol.
  • Having a trademark provides a host of legal protections. According to the American Bar Association, a trademark “grants the right to use the registered trademark symbol: ®,” allows a rights holder to sue for trademark infringement, and “acts as a bar to the registration of another confusingly similar mark.”
  • Fraudulent use of the registration symbol ® may cause you trouble in registering a trademark. While examiners may overlook the registration symbol ® when reviewing specimens, potential opponents may seize on the opportunity to invalidate a trademark application when it is advertised in the USPTO Trademark Official Gazette.
  • Misuse of Registration symbol is a ground of opposition. See: Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991)

May I submit specimens with the R symbols on them?

  • The R symbol used on Statement of Use specimens may cause problems and delay the registration of your trademark.
  • The TMEP is clear on this. The Examiner is instructed to scold you and that’s it. The Examiner is instructed to accept the specimen unless there is some other reason (not the R in a circle) to reject it. After all, the R in a circle might be there because of a valid and subsisting registration in some country that is not the US.
  • A U.S. registration for related goods/services or a related mark is not

Am I required to register my mark?

No. You can establish rights in a mark based on legitimate use of the mark in most countries, but it can become very expensive to prove your unregistered trademark rights if you need to go court.
Owning a federal trademark registration on the Principal Register provides several advantages, such as:

  • You may use the federal registration symbol ® on or in connection with the goods and/or services listed in the federal trademark registration.
  • Constructive notice to the public of the registrant’s claim of ownership of the mark;
  • A legal presumption of ownership of a valid trademark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration, if it is registered on the Principal Register;
  • The ability to bring an action concerning the trademark in federal court;
  • The use of the U.S trademark registration as a basis to obtain trademark registration in foreign countries; and
  • The ability to file the U.S. trademark registration with the U.S. Customs Service to prevent others from importing infringing foreign goods.

When can I use the trademark symbols TM and SM?

Any time you claim rights in a mark, you may use the ™ (trademark) or the ℠ (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO.

Trademark Symbols on your Keyboard

The trademark symbol ™ in HTML is either:
 ™ or ™
The service mark symbol ℠ in HTML is ℠

Typing the R trademark symbol:

Registered Trademark Symbol ® in HTML:
® or ® or ®
Windows Alt code: Alt + 0174 (on numeric keypad).
Linux: either AltGr + R or Compose key, O, R
Mac OS: Option + R
US-International keyboard layout and UK-International keyboard layout: AltGr+R.
Emacs: C-x 8 R
LaTeX: \textregistered in text mode.
LaTeX: \circledR in text or math mode (requires amsfonts package)

Trademark Symbol References

https://www.uspto.gov/web/offices/tac/doc/basic//register.htm
https://en.wikipedia.org/wiki/Trademark_symbol
 
These points of authority do not necessarily reflect the views of the writer. This blog is not legal advice. These posts are just notes.

How to trademark a band name

It is important to trademark a band name either before a band starts playing in venues or soon afterward. Often a band will break up at the beginning and one or more band members will try to claim ownership to the band’s name. And domain name squatters may register a bandname.com as soon as a band becomes popular. Without a trademark, the band will have a tough time getting their bandname.com domain name.

How to trademark a band name?

File a trademark application online with the USPTO, CIPO, EU Trademark and UKIP offices claiming use or propose use of the trademark with the service: Entertainment in the nature of live performances by a musical band and with various goods.

Trademark Band Name

A band can trademark its name for the services that it provides and the goods that it sells. Typically, a band provides a service claimed as: Entertainment in the nature of live performances by a musical band
Often a band will also sell goods such as t-shirts, hats, mugs, and stickers.
A band can only trademark the goods that it sells, no just gives away. So if the band gives away its stickers, instead of selling them, then it can’t claim stickers in its list of goods.
Since a startup band is usually tight on money, it should apply for separate trademark applications for the stuff it actually sells, with a separate application for each category of goods it sells.
Entertainment in the nature of live performances by a musical band is in International Class 041.
t-shirts and hats are in International Class 025. Don’t just claim clothing, as that is not specific enough. A trademark applicant must specifically itemize the goods that it sells.
These points of authority do not necessarily reflect the views of the writer. This blog is not legal advice. These posts are just notes.

Trademark Specimen

What is a Trademark Specimen

A trademark specimen is a photo or a screenshot showing how you actually use a trademark in commerce in connection with your goods and services, to indicate the source or owner of the trademark.
For example, if you have applied for goods, you’ll want to submit a picture of your trademark on a label or hang tag that is attached to the goods.
Packaging that shows the trademark is also acceptable.
For example, if your goods are t-shirts, you may submit an up-close digital photograph of the:

  • trademark appearing on a hang tag attached to a t-shirt;
  • trademark stitched onto the collar label; or
  • trademark stitched onto the bottom hem of the t-shirt.

Examples of Acceptable Trademark Specimens

An acceptable trademark specimen for a t-shirt is usually a hang tag attached to the t-shirt. For example, see the following specimen supporting USPTO Reg. 4831335, which shows use of the quote: I CAN’T KEEP CALM I’M TWO on a t-shirt.
USPTO Reg. 4831335 claimed the trademark on the following goods in class 025: Baseball caps and hats; Body shirts; Body suits; Body suits for babies; Crew neck sweaters; Graphic T-shirts; Hooded sweatshirts; Short-sleeved or long-sleeved t-shirts; Sweaters; Sweatshirts; T-shirts; V-neck sweaters.
I CAN'T KEEP CALM I'M TWO trademark specimen for a purple-shirt
When a trademark is used on the goods themselves, the trademark should appear where and how consumers expect to see a trademark, and not merely as a decorative or ornamental design.
However, there are close cases where the USPTO accepts a slogan in a large font on the goods as a specimen because the slogan is not merely an ornamental design.
For example, the USPTO accepted the following trademark specimen for the word DO on a t-shirt, in USPTO SN 86362271:

DO

DO trademark in a large font on a t-shirt


And the USPTO accepted following trademark specimen from Nike, Inc., for the word Nike on a swoosh design for t-shirts in USPTO SN 75975473:
Nike swoosh trademark specimen

USPTO accepted Nike swoosh trademark specimen on a t-shirt


The USPTO Trademark Examiner’s Manual “TMEP” provides a full explanation:

904.03    Material Appropriate as Specimens for Trademarks

For a trademark application under §1(a), allegation of use in an application under §1(b), or affidavit of use under §8 or §71 of the Trademark Act, the specimen must show the mark as used on or in connection with the goods in commerce.  A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods.  37 C.F.R. §2.56(b)(1).  A photocopy or other reproduction of a specimen of the mark as used on or in connection with the goods is acceptable.  37 C.F.R. §2.56(c).

See TMEP §§1301.04 et seq. regarding service mark specimens, TMEP §1304.02(a)(i)(C) regarding collective membership mark specimens, TMEP §1303.01(a)(i)(C) regarding collective trademark and collective service mark specimens, and TMEP §1306.02(a)(i)(B) regarding certification mark specimens.

Example of an Unacceptable Trademark Specimen

If your trademark is a design, and the design appears to cover most of the t-shirt, it is not an indicator of the source of the t-shirt because the design is used in an ornamental fashion. So a photo of the t-shirt showing the ornamental design is not an acceptable trademark specimen.
For example, in the USPTO application for the quote KEEP CALM AND RETURN FIRE where the applicant was claiming a service, the examiner rejected the unacceptable specimen and stated:

The initial specimens were merely shirts showing the mark being used as an ornamental slogan on the shirts.

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the services specified in International Class 35 in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Chengdu AOBI Info. Tech. Co., 111 USPQ2d 2080, 2081-82 (TTAB 2011); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  Specifically, the applicant’s services are identified as “Charitable services, namely, organizing and conducting volunteer programs and community service projects aimed at increasing support and morale of families of deceased war veterans, war veterans, current members and future members of the United States military.” Therefore, the specimen must show use in connection with promoting or advertising the applicant’s “organizing and conducting volunteer programs.” The initial specimens were merely shirts showing the mark being used as an ornamental slogan on the shirts. The specimen submitted in the July 7, 2015 response shows the retail sale of shirts using the slogan ornamentally on the chest. None of these specimens refer to the applicant’s “volunteer programs” in any manner. The specimen merely refers to fundraising for the Reconnaissance Foundation and the slogan is not used even in reference to those services. The proposed mark is merely shown used as an ornamental slogan on a shirt.

Specimens used in the promotion or advertising of the services must explicitly reference the services to establish a direct association between the mark and the services. In re Monograms Am., Inc., 51 USPQ2d 1317, 1318 (TTAB 1999); TMEP §1301.04(f)(ii).

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

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.  See TMEP §1301.04(a), (h)(iv)(C).

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use.

(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/specimen.jsp.

Since the specimens do not show use in connection with the identified services, registration is refused under Trademark Act Sections 1 and 45.

Keep Calm and Return Fire Trademark Specimen 2015
PS: The content of this blog is not legal advice. You should read the TMEP in detail on your own or call a trademark attorney to discuss your particular matter to protect your rights.
These points of authority do not necessarily reflect the views of the writer. This blog is not legal advice. These posts are just notes.

Can I Use the Superman’s Chest Shield Design on T-shirts?

No, not without a license from DC COMICS according to a complaint that DC COMICS filed in United States District Court against Mad Engine, in 2015, Case 2:15-cv-05492, in the CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION.
DC Comics is the publisher of comic books and magazines, including those featuring the world-famous Superman character. DC also engages in a substantial licensing program for Superman.
DC Comics claimed intellectual property rights in its Superman character, his associates, his world, and other indicia associated with him, such as the red and yellow five-sided shield that appears on Superman’s chest (the “Shield Design”). The Shield Design has undergone several transformations over the years.
In this case, Mad Engine produced and sold t-shirts with a red and yellow five-sided shield that embedded the word DAD.
These points of authority do not necessarily reflect the views of the writer. This blog is not legal advice. These posts are just notes.
 

Can a Messenger Wear a Superhero Costume?

There was a messenger business in New York city that thought that it would be cool to have its messengers wear superhero costumes. It got cease and desist letters real quick. Then it got sued by Marvel and DC Comics for trademark infringement and copyright infringement. The business folded soon thereafter.
 
These points of authority do not necessarily reflect the views of the writer. This blog is not legal advice. These posts are just notes.