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one of the common reasons trademark applications get refused in the us is because trademark applicants fail to submit acceptable specimens of use for all goods and services listed in their trademark applications my name is andre minkoff i'm the founder of trademark factory and in this video i'll share with you everything you need to know about specimens of use what makes them acceptable as well as the do's and don'ts around specimens of use and in the second part of this video we'll even go through specific industries with which trademark owners usually struggle to provide acceptable specimens of use the most ready all right a few important introductory words of wisdom since we're going to be talking about specimens of use it's important to understand what use actually is trademark used is a legal term that relates to using your brand in commerce as a trademark to identify your products and services and in most countries you don't need to prove use to register or renew your trademark however you cannot register or renew a us trademark until and unless you show acceptable evidence of use of your trademark as filed or as registered for all products and services listed in your trademark application let me repeat that in the us you cannot register or renew your trademark until and unless you show acceptable evidence of use of your trademark as filed or is registered for all products and services listed in your trademark application now there are different rules for what constitutes use of your trademark in connection with physical products and what constitutes use of your trademark in connection with services uh trademark is used in association with products when the public can see the trademark on the products themselves their packaging tags labels or in some cases documentation at the time the products are sold or transported for sale a trademark is used in association with services when the public can see the trademark during sale rendition or this important advertising of the services as you can probably tell already it's easier to prove use of your trademark and connection with services because unlike with physical products simply showing that you're using your trademark to advertise your services is enough to prove use of your trademark whereas using your trademark to advertise your products is not enough but i'm jumping ahead of myself let's go through several examples of what constitutes acceptable specimens of use number one when you place your trademark on the product itself so the specimen would show a photograph of your products with your trademark clearly visible on the product number two trademarks on labels and tags if your product has labels or tags you can show a photograph of those tags bearing your trademark we'll talk about this in detail in the second part of the video but placing your trademark on labels and tags is the most widely accepted form of a specimen of use for apparel number three trademarks on packaging if you sell your products in a box or some other sort of packaging and the package has your trademark printed on it provide a photograph of the packaging to show use number four displays where products are sold you may also show photographs of branded displays fridges and similar things that hold your products for sale in public number five web pages with buy now feature now remember simply advertising your products is not considered proper use of a trademark in connection with products a website is generally considered advertising which would be fine for services but not products so if you want to use your website as evidence of use of your trademark in connection with your products it needs to be a page that clearly links your products to your trademark at a time when the public is purchasing your products in other words a screenshot of your home page that says buy qrstp gadgets they're the best in the world that would not work however a screenshot of a page that says qrstp gadget shows a picture and the price with an add to cart button would usually be acceptable that would usually work number six web pages with download links if you're trademarking your brand in connection with downloadable products like books software educational or entertainment materials you can show a screenshot of a web page with the download link entertainment and education can be both a service and a product so for trademarking services in class 41 you simply need to show that you're advertising or making your services available under that brand for products though you should show the use of your trademark at the moment the public gets something tangible from you even if it's just a downloaded file number seven web pages that advertise your services now i already mentioned that in order to prove use in connection with services it's sufficient to show that you're using the trademark to advertise your services and having a website that bears your trademark where you use the trademark to advertise your service is usually sufficient note of warning here though if your trademark is a word mark make sure you format it on your website to stand out from the rest of the text why well because it needs to clearly identify your services and not be used as part of your marketing copy number eight tv radio web ads for services similarly if you're on tv radio web ads for services you can submit them as evidence of use and when i say submit them it can be screenshots could be links to the actual video could be a recordings of the jingle whatever it is number nine marketing materials for services business cards flyers all sorts of marketing materials that show your trademark in connection with advertising your services would normally be acceptable specimens of use number 10 signage where services are provided assigned with the name of your store if you're trademarking your branding class 35 for retail services or your restaurant or your accounting firm all of that would serve as an acceptable specimen of use as long as it's clear what your photograph actually shows simply drawing your trademark on the wall would not be good enough since you have to be able to make the case that the sign is what your customers see when they consume the service you're providing to them number 11 materials for use with services menus band signs banners and other similar items could also support your use of the trademark okay so that's what typically works as an acceptable specimen of use now i have a few words of caution for you first of all and this is extremely important your evidence must be real no photoshop no digital mock-ups and yes the uspto is very serious about that kind of stuff your trademark can be denied or cancelled if you try to sneak in doctored evidence simply do not do it second your evidence must show the actual trademark as filed no variations are allowed this is why when we have clients who are not sure if they're going to have a space between two words or whether there should be an exclamation mark at the end or similar things like that we always tell them pick a variant for which you know you'll be able to provide a specimen of use third yo
Thanks for your comment Hubert Minicozzi, have a nice day.
- Maud Hebb, Staff Member
he Forks today we're going to be talking about trademarking and specifically trademark symbols it sounds like it's going to be a bit boring well you could be right there but this is important you should know about trademarking when it comes to your brand and your logo so let's make a star and let me take you through each of the three main symbols so the first is the TM symbol sometimes known as the common law mark the TM symbol is used to make people aware that you are claiming rights on your trademark unlike a registered trademark which we'll discuss later on in this video a common law trademark can be harder to protect and that's because there's no public record of when the trademark was first used next up is the SM symbol now this isn't as commonly used as the TM symbol but it stands for service mark so if your brand offers services such as banking or legal or even design services you should be using the SM mark the TM symbol is much more widely recognized though and so I would suggest that you use the TM symbol over and above the SM one next up is the R symbol unlike the previous two symbols the TM and the SM the R represents an officially registered trademark you may only use the R symbol if you have registered your brand or your logo with an official trademark body if you go ahead and use the R symbol with unofficially trademarking then you could run into claims of fraud where you knowingly or willingly attempt to deceive or mislead consumers or try to prevent another brand from registering a mark which is similar or the same as your own if you have the budget to do so I would always say go ahead and officially register your trademark so what about when it comes to actually using the symbols on your logo worship the goal well in the mean peep we'll put the logo in the upper right-hand corner next to the logo it can also go in the lower right-hand corner or it could go inline with your logo or brand name there is no right or wrong it can actually go anywhere around your logo but you do want to have it in a sort of an unobtrusive way if you know for a fact that when you're having your logo designed you will be officially registering it let your designer know because they'll then be able to take that into account when you're creating the logo design so that the TM or the registered trademark symbol will be more balanced in the design okay so a quick recap you don't have to be using the TM or SM symbols to make common law rights claims to your trademark when it comes to the registered trademark symbol that little R in a circle you must have an officially registered trademark to use it and lastly let your designer know if registering that trademark is something you intend to do because they'll then be able to take that into account when they're sketching conceptualizing and create the final little design by knowing in advance they'll be able to incorporate that little symbol into your logo to give an overall better balanced and visual look to the final design it's at this point I should stress that trademark law is very complex you should always seek the advice of a trademark lawyer who can take you through the process and make sure that nothing is missed you don't want to go ahead and register your trademark and make a mistake so that someone challenges it you end up losing so there you have it that's a little bit more information for you on trade marking symbols not the most exciting of topics I know but it is something that you should know when it comes to branding I hope you find this video useful if you have make sure you give the video a thumbs up please leave me a comment let me know if you've actually been through the trade marking process yourself if you haven't already so scrape to the channel and make sure you click on that little bear icon to be notified whenever I release a new video and until I see you next time stay creative folks [Applause]
Thanks Imogene your participation is very much appreciated
- Maud Hebb
About the author
I've studied transport economics at Richmont Graduate University in Chattanooga and I am an expert in human ecology. I usually feel devious. My previous job was aeronautical & aerospace engineer I held this position for 24 years, I love talking about farming (animal) and jump roping. Huge fan of Naomi Scott I practice laser tag and collect cards.
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