A specimen is a means of providing proof of your goods or services to the uspto. My apologies for not posting last weeks trademarks published for opposition, so i will feature some of those marks below, as well as the marks published on june 28, 2016. Data management services for use in debt collection, namely, electronic data collection and online claims management. Trademark class 42 is a trademark class used by the united states patent and trademark office uspto. What is the trademark classification for software to be. A trademark is any mark word, design, color, sound, symbol, device, etc. This category includes technical or scientific services in relation to practical and theoretic aspects of complex fields. How to meet the commercial use requirement for an app trademark. Getting this wrong can be costly and timeconsuming. Given that the required petition fee for amending the registration is less than the filing fee for an entirely new us trademark application, this pilot program could be of particular interest to us trademark owners in the software, media, cloud computing, social networking and mobile communications spaces. Sep 17, 2015 given that the required petition fee for amending the registration is less than the filing fee for an entirely new us trademark application, this pilot program could be of particular interest to us trademark owners in the software, media, cloud computing, social networking and mobile communications spaces. Nov 24, 2017 the trademark manual of examining procedure tmep is the official manual of the united states patent and trademark office governing how the office handles trademark applications and. While this may be a literal specimen of the sandwich, this is not the specimen the trademark office needs to register a trademark. Trademark class 9 is one of 45 classes used by the united states patent and trademark office uspto to classify products or services.
Two recent trademark decisions provide ammunition for trademark owners who receive improper specimen refusals for service marks. Mark is shown in large font at the top of the webpage and in the middle of the webpage. The following is a list of trademarks and service marks registered and owned by nikon corporation in the united states, and certain other countries. The manner of trademark use on a specimen must be such that potential customers. It may be unclear, based on the submitted specimen, whether the applicant is providing nonsoftware services in a given field or subject matter e. Jan 14, 2011 to expand on my colleagues response, class 9 covers retail and downloadable software, class 42 covers computer services including temporary use of nondownloadable clientserver software, and class 38 covers a multipleuser access to a global computer network. Such a specimen is not acceptable for the socialnetworking services since it does. Trademarkservice mark application, principal register. Buchanan provides the economic background to explain how unprecedented these times are and argues that supporting cities and states is essential to surviving this crisis. The signatory believes that the applicant is the owner of the trademark service mark sought to be registered.
If the trademark application is for tradeair then the app name should have the tradeair. What is the difference between class 9 software and class. How to provide a good specimen proof of use witmart. To expand on my colleagues response, class 9 covers retail and downloadable software, class 42 covers computer services including temporary use of nondownloadable clientserver software, and class 38 covers a multipleuser access to a global computer network. Meeting the use in commerce requirement for a cloudbased. Md trademark of fruit street health, public benefit. Annual report on global specimen solutionss revenue, growth. How to register your software app name as a trademark nolo. Emeter in the united states patent and trademark office applicant.
To be acceptable for trademark registration purposes, a specimen must show the mark as used on or in connection with goods products sold in commerce that is regulated by congress, namely interstate, territorial, and commerce between the united states and a foreign country. Section 1051a, the applicant is the owner of the trademarkservice mark sought to be registered. Uspto posts service marks specimens examination guide. Input field entered serial number 86634255 mark information mark continuous active learning standard characters yes usptogenerated image yes. If the website simply advertises the software without providing a way to download it, the specimen is unacceptable. A specimen is an example of the trademark used in connection with the goods or services provided to the government. Sep 09, 2015 temporary use of online nondownloadable computer software application development tools and programming language for use in developing, analyzing, coding, checking, and controlling other computer software. Uspto posts service marks specimens examination guide lexology. Oct 31, 2014 uspto posts service marks specimens examination guide. Apr 29, 2014 class 9 is a software product that can be made and sold separately from other products or services. Ttab dismisses appeal from specimen refusal because. Ispecimen guardian providing temporary use of nondownloadable computer software for use by hospitals, universities, medical clinics, laboratories and the life science and medical research communities to search, select, track, process, deidentify, anonymize, tag, mine and catalog clinical biospecimens and their associated data. Computer software for calculating the value of solar photovoltaic systems. Trademark serial number is a unique id to identify the covid.
Apr 27, 2015 software is content or fieldspecific, the field of use this does not include providing online computer games that are played online ic 042 computer software design and development ic 041 nondownloadable publications and game software ic 038 transmission of sound, video and information from web cams, video cameras or mobile phones. If your only download is your neighbor, then it does not likely meet the. A specimen for service must show use of the mark in a manner that would be perceived by potential purchasers as identifying the applicants services and indicating their source. Annual report on global specimen solutionss revenue. Computer and scientific trademarks trademark resources. Temporary use of online, nondownloadable software for calculating ballistic trajectories. Section 1051a, the applicant is the owner of the trademark service mark sought to be registered. The uspto treats downloadable software as a class 9 good, and nondownloadable software.
The wording the mobile app platform for developers and add a powerful. For apps, the best specimen is a screen capture of the app store listing clearly showing the mark. Refusal to register under trademark act section 1a specimen of use omitted. The signatory believes that the applicant is the owner of the trademarkservice mark sought to be registered. The manner of trademark use on a specimen must be such that potential customers would.
The wording the mobile app platform for developers and add a powerful and scalable. This opinion is not a precedent of the ttab united states. Specimen is described as web printout and appears to show the mark used in rendering the services. The specimen must show the mark as used on or in connection with the goods in commerce.
Meeting the use in commerce requirement for a cloud. Class 42 is a service that allows software to be used for various purposeswith the software tied into the service provider such as a website. Since class 42 consists of scientific and technological services rather than goods, you need to submit proof of your services on which the trademark is clearly visible. Jun 29, 2016 all is good so far, until the applicants specimen is examined see above. All is good so far, until the applicants specimen is examined see above. The absence of any trademark, service mark, name, product or logo from this list shall not constitute a waiver of any of nikons intellectual property andor proprietary rights in such trademark. Performing research and development, or other routine or expected activities.
Jan 16, 2020 the board dismissed this appeal from a refusal to register the mark finlistics clientiq for business development consulting services, namely, providing temporary use of nondownloadable software for analyzing, calculating, measuring, modeling, and forecasting business and financial performance, because applicant failed to address the ground for refusal. Providing an online workplace learning and training platform, ecosystem, and learning management system in the fields of. This sample proves that the company is using the claimed mark in connection and association with its company activities products or services. If the trademark involves downloadable software, the specimen may include instruction manuals or screenshots from 1 a webpage showing the mark with information allowing ordering, purchasing or downloading the software, 2 the program showing the mark in the title bar, or 3 launch screens showing an introductory messages appearing after launching the program. Providing temporary use of online nondownloadable software for digitizing, enhancing, manipulating, editing, printing, storing, indexing and transmitting images, for ordering of photographic prints and albums over global computer networks, and for ordering and central storage of online photograph albums. Providing a website featuring nondownloadable software to enable uploading, creating, posting, editing, showing, displaying, blogging, sharing and transmitting of electronic media, videos, or information. Similarly, an applicant might file an application for a mark for the name of a. Buchanan provides the economic background to explain how unprecedented these times are and argues that supporting cities and. Opposer attached a printout from the usptos 1 application serial no.
United states patent and t o this opinion is not a trademark. Providing temporary use of nondownloadable computer software for. What is the difference between class 9 software and class 42. Downloadable software for calculating the value of solar photovoltaic systems. Classes like 9 and 42 are so similar, in fact, that class 9 includes downloadable software while class 42 includes nondownloadable software. Proving commercial use of a cloudbased software platform, web app, saas, or other nondownloadable program that exists solely in the cloud can be tricky. Providing online nondownloadable software for use in clinical trial protocol development in the nature of developing protocols for medical clinical trials and research.
How to meet the commercial use requirement for an app. Specimen description excerpts from seminar presentation international class 042 research and development of new technology and theory for others in the field of legal discovery and development and dissemination of scholarly materials in connection therewith. Acceptable trademark specimens griggs bergen llp, trademark. Providing temporary use of nondownloadable computer software for retirement planning, in class 42. Such a specimen is acceptable only if it provides sufficient information to enable the user to download the software from the website.
It may be unclear, based on the submitted specimen, whether the applicant is providing non software services in a given field or subject matter e. A specimen, for trademark office purposes, shows the manner in which a mark is seen by the public. What is the trademark classification for software to be used. In this first of a series of columns about federal relief to state and local governments, uf levin college of law professor and economist neil h. Charitable financial servicescommunity development servicescharitable educational services. If a proposed mark does not function as a service mark for the services recited, or if. The board dismissed this appeal from a refusal to register the mark finlistics clientiq for business development consulting services, namely, providing temporary use of nondownloadable software for analyzing, calculating, measuring, modeling, and forecasting business and financial performance, because applicant failed to address the ground for refusal. For downloadable software, copies of the instruction manual and screen printouts from 1 web pages showing. For a trademark application to be officially registered and assigned. Lykon trademark serial number 87196083 justia trademarks. For cloudbased software or saas, specimens must show the uspto that the. Feb 08, 2017 providing memberbased use of online nondownloadable software and applications to access, create, and view training and educational modules for professionals related to digital skills and the use of digital applications. Jan 15, 2020 the board dismissed this appeal from a refusal to register the mark finlistics clientiq for business development consulting services, namely, providing temporary use of nondownloadable software for analyzing, calculating, measuring, modeling, and forecasting business and financial performance, because applicant failed to address the ground for refusal. An example in that section is that computer antivirus software in class 9 can be amended to add providing temporary use of nondownloadable computer antivirus software, which is a service in class 42.
The trademark manual of examining procedure tmep is the official manual of the united states patent and trademark office governing how the office handles trademark applications and. Classification and identification of goods and services. The mark is in use in commerce on or in connection with the goodsservices in the application. Computer software development 3301995 providing employee and management. Biological specimen collection kits comprised of a sample container and lancet, and also including an alcohol wipe, gauze, and adhesive bandage, for use in health and wellness monitoring. Protocol kickstarter providing online nondownloadable software for use in managing data and information in the field of medical clinical trials and research. Providing memberbased use of online nondownloadable software and applications to access, create, and view training and educational modules for professionals related to digital skills and the use.
Broadening a us trademark application the usptos new. The specimens shows the mark as used on or in connection. Modern computer and technologyrelated services present special challenges because these services, and the terminology used to describe them, are continually evolving. Class 9 is a software product that can be made and sold separately from other products or services.
A photocopy or other reproduction of a specimen of the mark as actually used on or in connection with the goods is acceptable. A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods. If your application is a downloadable app as opposed to a nondownloadable. Ttab dismisses appeal from specimen refusal because applicant. When it comes to proper specimens, there is no single perfect example of a specimen. Viners trademark serial number 86698787 justia trademarks. A servicemark specimen must show the mark as actually used in the sale or advertising. For downloadable software, copies of the instruction manual and screen printouts from 1 web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, 2 the actual program that shows the mark in the title bar, or 3 launch screens that show the mark in an introductory.
Listing too many goods or services on the application. Feb 18, 2019 federally registered trademark symbol. Where the mark is used in advertising the services, the specimen must show an association between the mark and the services for which registration is sought. The specimen s shows the mark as used on or in connection with the goodsservices in the application. For services, a specimen shows the trademark as actually used in commerce with your existing services in a way that directly associates the trademark with the services. This attachment is usually required for a section 1a usebased trademark application. There are several different ways an applicant can show a specimen for an app. Oct 26, 2016 software is content or fieldspecific, the field of use this does not include providing online computer games that are played online ic 042 computer software design and development ic 041 nondownloadable publications and game software ic 038 transmission of sound, video and information from web cams, video cameras or mobile phones. For example, a specimen could be an advertisement, brochure, website printout or other promotional material which shows your trademark used for the services, business signs. In the past few years, many trademark practitioners have noticed an.