When applying for a service mark, it is essential to provide specimens that demonstrate the mark's use in commerce. This article will explain what clients need to provide, emphasizing that showing use in commerce for service marks requires more than just advertising materials. There must be both advertising and the provision of services to customers before use in commerce can be claimed.
Understanding Service Mark Specimens
A service mark specimen is an example of how the mark is used in the advertising and sale of services. The United States Patent and Trademark Office (USPTO) requires these specimens to verify that the mark is used in a way that consumers recognize it as a source identifier for the services provided.
Types of Acceptable Specimens for Service Marks
1. Advertising and Marketing Materials: These materials must clearly display the service mark and describe the services provided.
Example: BURGESS HEATING & AIR® post card for HVAC Services
2. Websites and Online Advertising: Screenshots of web pages where the service mark is prominently displayed and the services are described.
Example: A PACIFIC HEIGHTS DENTAL® homepage showing the service mark and detailing the services offered.
3. Business Documents: Documents such as business cards, letterhead, invoices, and contracts that show the mark and describe the services.
Example: A CAYTON EXCAVATION® business card with the service mark and a description of the services like "Excavation."
Demonstrating Use in Commerce
For service marks, it is crucial to show that the mark is used in the actual provision of services to customers, not just in advertising. This means the specimen must provide evidence of the service mark being used in the context of offering and delivering services.
Typically, this means that your specimens display:
a) Your Trademark
b) a description of the services offered under the trademark that matches with the services applied for on your trademark application
c) a way to contact your business to sign up for your services.
There is no requirement to provide evidence that you have delivered services to clients. You are required to sign a declaration under oath that you have in fact delivered the services to customers. Making false statements, though, could result in a trademark registration that can be easily canceled by any competitor.
Common Mistakes to Avoid
Advertising Only: Advertising alone is not sufficient. You must also provide the services covered by your trademark to customers.
Missing Elements of Use: A service mark specimen must show your trademark, provide a description of your services, and a way to contact your business.
Digital mock ups: You can't use computer files as a specimen. Any one can make a fake business card or a poster on their computer in two minutes and so the trademark office will not accept these types of specimens. You will need to provide photos of your specimens in use in real life, out in the world, as they are displayed to your customers.
Conclusion
Providing proper specimens is a crucial step in the trademark application process for service marks. It is essential to demonstrate that the service mark is not only advertised but also used in the actual provision of services to customers. By following these guidelines and submitting comprehensive and accurate specimens, you can help ensure a smooth and successful service mark registration process.