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Loosening the Specimen Requirements for Trademark Applications

March 17, 2010 by · Comments Off
Filed under: Inventor & Entrepreneur Updates, law, trademark, Trademark Articles 

By Ed Nunes, W&M Law class of 2010

The US Court of Appeals for the Federal Circuit handed down a decision overturning a decision by the Trademark Trial and Appeal Board (TTAB) to refuse the mark “One Nation Under God” for charity bracelets (opinion available here).  The decision broadens the standard set out in Lands End, Inc. v. Manbeck, 797 F.Supp. 511 (E.D. Va. 1992), which required a picture of the product for web-based trademark specimens.

The Old Standard

Chapter 37 of the Code of Federal Regulations, section 2.56(b)(1) states “A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods. The Office may accept another document related to the goods or the sale of the goods when it is not possible to place the mark on the goods or packaging for the goods.”  37 CFR 2.56(b)(1).

Websites are often refused as proper specimens for trademarks because websites they are used as advertising for a product, and thus are refused as only servicemarks may use advertisements as specimens.

Lands End, Inc. v. Manbeck and Trademark Manual of Examining Procedure (TMEP) section 904.06, however, set a standard where websites could be used for trademarks, as long as three criteria were met:

  1. There is a relevant picture of the good,
  2. The trademark is sufficiently close to the good so that consumers will associate the good with the trademark, and
  3. The page includes all the information necessary to order the goods.

The Case at Hand

Michael Sones submitted an application to the United States Patent and Trademark Office (USPTO) attempting to register the mark “One Nation Under God” in connection with “charity bracelets”.  For a specimen of Sones’ mark he used a web page complying with requirements two and three under TMEP 904.06, but failing to show a picture of the good.

Click on Trademark Specimen to see what was submitted.