1301.04(f)    Elements of an Acceptable Service-Mark Specimen

To be acceptable, a service-mark specimen must show the mark sought to be registered used in a manner that demonstrates a direct association between the mark and the services. 37 C.F.R. §2.56(b)(2). Specimens need not explicitly refer to the services to establish the requisite direct association between the mark and the services, but "there must be something which creates in the mind of the purchaser an association between the mark and the service activity." In re Cardio Grp., LLC, 2019 USPQ2d 227232, at *1 (TTAB 2019) (quoting In re Way Media, 118 USPQ2d 1697, 1698 (TTAB 2016)); see In re JobDiva, Inc.,843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir.2016) (quoting In re Ancor Holdings, LLC, 79 USPQ2d 1218, 1220 (TTAB 2006) ) ("[T]he question is whether the evidence of JobDiva's use of its marks ‘sufficiently creates in the minds of purchasers an association between the mark[s] and [JobDiva's personnel placement and recruitment] services.’").

The acceptability of a specimen is determined based on the facts and evidence of record, and viewed in the context of the relevant commercial environment. See In re Ancor Holdings, LLC, 79 USPQ2d at 1220 ("[W]e must base our determination of public perception of applicant's mark on the manner of use of [the mark] in the advertising which has been submitted as a specimen. Further, we must make that determination within the current commercial context, and, in doing so, we may consider any other evidence of record ‘bearing on the question of what impact applicant's use is likely to have on purchasers and potential purchasers.’" (quoting In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992)). Thus, the information provided by the specimen itself, any explanations offered by the applicant clarifying the nature, content, or context of use of the specimen, and any other information in the record should be considered in the analysis. In re Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (citing In re Pitney Bowes, Inc., 125 USPQ2d 1417, 1420 (TTAB 2018); In re DSM Pharms., Inc., 87 USPQ2d 1623, 1626 (TTAB 2008) ("In determining whether a specimen is acceptable evidence of service mark use, we may consider applicant's explanations as to how the specimen is used, along with any other available evidence in the record that shows how the mark is actually used.").

When the identified services involve newer technology, the examining attorney must follow the appropriate examination policies and procedures, but also should employ a practical approach in analyzing the submitted specimen. See In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286 (TTAB 2000) (finding a business card and stationery displaying the mark and the word "design" were acceptable specimens of use for applicant’s mark in connection with commercial art design services, noting that "[i]t is not necessary that the specific field of design, i.e., commercial art, also appear thereon" and that "the word ‘design’ alone is sufficient to create in the minds of purchasers an association between the mark and applicant's commercial art services"); In re Metriplex, Inc., 23 USPQ2d 1315, 1316 (TTAB 1992) (finding the submitted specimens acceptable to show use of applicant’s mark in connection with data transmission services because the specimens showed "the mark as it appears on a computer terminal in the course of applicant's rendering of the service" and noting that "purchasers and users of the service would recognize [applicant’s mark], as it appears on the computer screen specimens, as a mark identifying the data transmission services which are accessed via the computer terminal"). This may entail reviewing all the information of record to understand both how the mark is used and how it will be perceived by consumers. See In re JobDiva, 121 USPQ2d at 1126; In re Ancor Holdings, LLC, 79 USPQ2d at 1221. Additionally, if the examining attorney elects to conduct research regarding the mark, the services, or practices in the particular industry, it may be helpful to consider any information uncovered regarding how the applicant and others in the industry typically advertise and render the identified services in the relevant marketplace, as well as the manner in which service marks are normally used in connection with those services. See TMEP §1301.04(h)(iii) for a discussion of issues surrounding technology-related services.

1301.04(f)(i)    Show the Mark

The mark on the drawing must be a substantially exact representation of the mark shown on the specimen. See TMEP §§807.12–807.12(a)(iii) and §§807.12(d)–807.12(e) regarding agreement of the mark on the drawing and on the specimen. Furthermore, the designation must appear sufficiently prominent on the specimen (e.g., placement, size, or stylization) so that it will be perceived by consumers as a mark. See In re Dell Inc., 71 USPQ2d 1725, 1729 (TTAB 2004) (finding a mark "sufficiently prominent" even though it was "shown in a smaller type size than other words appearing on the webpage," given that it appeared "in a bullet listing of information about the product," and was placed "at the beginning of a line and [was] followed by the ‘TM’ trademark indicator"); TMEP §904.03(i)(B)(1). Compare In re Quantum Foods, Inc., 94 USPQ2d 1375, 1378 (TTAB 2010) (describing a mark as "prominently displayed" on the specimen when the mark appeared by itself above pictures relating to applicant’s goods in relatively large font and in a different color than some of the other text on the page) with In re Osterberg, 83 USPQ2d 1220, 1223 (TTAB 2007) (finding the mark not prominently displayed because it was buried in text describing the mark and, while the mark was shown in bold font, so was other matter). For instance, if shown in the same font, size, and color as the surrounding text on the specimen, the designation may not be perceived as a source indicator. See In re Osterberg, 83 USPQ2d at 1223.

1301.04(f)(ii)    Direct Association Between the Mark and the Services

The specimen must show the mark used in a manner that creates in the minds of potential consumers a direct association between the mark and the services. 37 C.F.R. §2.56(b)(2); See generally In re JobDiva, Inc., 843 F.3d 936, 941, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (quoting In re Ancor Holdings, LLC, 79 USPQ2d 1218, 1221 (TTAB 2006)) ("[T]he question is whether the evidence of JobDiva's use of its marks ‘sufficiently creates in the minds of purchasers an association between the mark[s] and [JobDiva's personnel placement and recruitment] services.’"); In re Adver. & Mktg. Dev., Inc., 821 F.2d 614, 620, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987) ("The ‘direct association’ test does not create an additional or more stringent requirement for registration; it is implicit in the statutory definition of ‘a mark used * * * to identify and distinguish the services of one person * * * from the services of others and to indicate the source of the services.’"); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973) ("The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor."); In re Cardio Grp., LLC, 2019 USPQ2d 227232, at *1 (TTAB 2019) (quoting In re Way Media, 118 USPQ2d 1697, 1698 (TTAB 2016) ("A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage.")).

Direct association is the minimum the specimen must show, and it may be established textually, contextually, or logically. In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973). What is necessary to establish direct association differs depending on the type of specimen submitted, that is, whether it is an advertising specimen or a rendering specimen.

Mark Used in Sales or Advertising of Services: For specimens showing the mark used in advertising the identified services, to establish the requisite direct association the specimen must contain a reference to the services and the mark must be used on the specimen to identify the services and their source. In re Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (citing In re WAY Media, Inc., 118 USPQ2d at 1698; ); In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010) (finding that, although the submitted specimens referenced the identified consulting services, the applied-for mark, as used on the specimens, would be perceived by the relevant public as identifying only applicant’s drug technology and thus the specimens failed to establish the required association between the mark and the identified services) . While the services need not be stated word for word, a sufficient reference to the services themselves or a general reference to the trade, industry, or field of use is required. See In re Pitney Bowes, Inc., 125 USPQ2d 1417, 1419-20 (TTAB 2018) (reversing the specimen refusal since the wording "outsourced mailing services" appeared directly below the mark on the webpage advertising and was a sufficient reference to applicant’s mailing, shipping, and delivery services); In re Florists’ Transworld Delivery, Inc., 119 USPQ2d 1056, 1062-63 (TTAB 2016); In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286 (TTAB 2008); see also TMEP §1301.04(h). However, if the alleged reference to the services is so vague that the services cannot be discerned, the specimen will not be acceptable. In re Chengdu AOBI Info. Tech. Co., 111 USPQ2d 2080, 2082 (TTAB 2011) ; see In re Monograms Am., Inc., 51 USPQ2d at 1318. See TMEP §1301.04(i) regarding examples of acceptable service-mark specimens.

Mark Used in Rendering of Services: For specimens showing the mark used in rendering the identified services, the services need not be explicitly referenced to establish the requisite direct association. See In re Metriplex, Inc., 23 USPQ2d 1315, 1316-17 (TTAB 1992) (noting that "the requirements specific to specimens which are advertising are not applicable" and finding the submitted specimens acceptable to show use of applicant’s mark in connection with data transmission services because the specimens showed "the mark as it appears on a computer terminal in the course of applicant's rendering of the service" and noting that "purchasers and users of the service would recognize [applicant’s mark], as it appears on the computer screen specimens, as a mark identifying the data transmission services which are accessed via the computer terminal"). Rather, direct association may be indicated by the context or environment in which the services are rendered, or may be inferred based on the consumer’s general knowledge of how certain services are provided or from the consumer’s prior experience in receiving the services. Id.; see In re WAY Media, Inc., 118 USPQ2d at 1698 . In other words, the context in which the services are provided and consumer knowledge and experience create an inference of the services without an explicit textual reference to the services. See TMEP §1301.04(i), Example 17 (CASHFLOW UNITS).

The applicant may respond to a specimen refusal for failing to show direct association by explaining the nature of the mark’s use or the manner in which the services are advertised or rendered. In re Metriplex, Inc., 23 USPQ2d at 1316 (finding the submitted specimens acceptable based, in part, on applicant’s explanation that the specimens showed the mark as it appeared on a computer terminal in the course of rendering the services). With respect to a particular industry’s typical use of marks in relation to specific services, it may also be helpful for the applicant to provide an explanation regarding industry practice concerning the use of the mark during the rendering of such services and how the applicant’s use comports with such practice. See TMEP §1301.04(i), Example 19 (design of speech bubbles).

The mere fact that the mark is displayed and the services are explicitly referenced or can be inferred from the context of the specimen does not automatically result in direct association between the mark and the services. See In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994). The specimen must associate the mark with the services such that the mark serves as a source identifier for those particular services. See In re WAY Media, Inc., 118 USPQ2d at 1698; cf. In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009) ("[T]he test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source." (emphasis added)). The requisite direct mark-services association is present when the specimen makes a direct link or connection between the mark and the identified services. See TMEP §1301.04(i), Example 17 (CASHFLOW UNITS) and Example 18 (RIDE 411).

Thus, a specimen is unacceptable if it fails to convey a proper nexus between the mark and the services, or if the services are too attenuated from the proposed mark, either in terms of proximity or logical connection. See, e.g., In re Monograms Am., Inc., 51 USPQ2d at 1319; In re Metriplex, Inc., 23 USPQ2d at 1316. The mere fact that wording from the identification of services appears somewhere on the specimen may not necessarily suffice for the mark-services association or nexus, if there is nothing else to connect that wording to the mark, such as proximity or additional text that establishes the connection.

In assessing whether there is a direct association between the mark and services, the examining attorney should consider the specimen’s content, layout, and overall look and feel, as well as any description of the specimen and industry practice relating to service-mark usage in advertising and rendering the services.