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Specimens of Use for a Service Mark Application

For a trademark application involving a service mark, consider whether the services are described and understood where the mark is shown in your specimen of use. If not, then the service mark may not be used “on” or “in connection” with the services as required by the law.

 

Keys to Proper Use of a Service Mark

Here are several keys to using a service mark appropriately and producing an acceptable specimen of use for the U.S. Patent and Trademark Office:

Use the Mark IN CONNECTION with the ServicesSM service mark symbol

The service mark needs to be used in the actual sale or advertising of the services. To specimen that you present to the Trademark Office should show the mark in a way that potential purchasers would perceive to identify the services and indicate the source of those services.

Usually, the difficulty is that the mark does not identify the services. The specimen must show the association between the service mark and the services provided. A specimen that shows the mark as used in the course of rendering or performing the services is generally acceptable even though the services may not be described. It should be self-evident from the specimen what the services are to avoid rejection.

In an example of proper service mark use, a car wash might send a direct-mail leaflet to potential a customer that describes the service of cleaning a car and the prices for different levels of the service. An automobile dealer might have a billboard with their service mark displayed and a description that says they will sell you a car for less money than their competitor. This type of connection between the mark and the description of services is excellent.

Other acceptable specimens may include newspaper and magazine advertisements, brochures, billboards, handbills, direct-mail leaflets, menus (for restaurants), and the like.  I have also used signs on buildings that are clearly connected to the services within the building. This has worked for restaurants, coffee shops and car dealers. Letterhead and business cards sometimes work for services if the services are described near the service mark. Finally, website pages can be used as specimens when the services are described in connection with the mark.

Avoid Use as Only a Corporate Name

As with a trademark on products, be careful not to use a service mark only as a company name. If you are using words like company, corporation, Co. and Inc. after the mark, then you might need to take another look at how you are using the mark.

Avoid Use Without Rendering or Advertising Services

Use of a service mark in items like a printer’s proofs for advertisements, press releases to news media, or other printed articles resulting from such releases are not accepted as specimens of use. These type of items do not show use of the mark by the trademark applicant in the actual rendering or advertising of the services.

Another example of items that fall under the category of failure to render or advertise services can be letterhead or business cards. These type of specimens can go either way as far as acceptability. The key is whether the specimen includes information about the services. A letterhead or business card that bears only the mark and a company name and address are not adequate specimens because they do not show that the mark is used in the sale or advertising of the particular services recited in the service mark application.

One way to overcome this problem with letterhead is to describe the services within the content of the actual letter that uses the letterhead. The courts have found that a copy of an actual letter on letterhead stationery bearing the mark is an acceptable specimen of use if the content of the letter indicates the field or service area in which the mark is used.

If your trademark is being used of goods (i.e. products) rather than service, then read about specimens of use for a trademark application.

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