1 00:00:11,040 --> 00:00:16,000 Good afternoon thank you all for attending  today's presentation at trademark specimens   2 00:00:16,000 --> 00:00:21,840 overview for experienced filers a link to today's  slides was included in the email you received   3 00:00:21,840 --> 00:00:27,440 with the link to join this presentation as a  reminder we are recording today's presentation   4 00:00:27,440 --> 00:00:31,280 and within two to three weeks the recordings  will be made available for viewing   5 00:00:31,280 --> 00:00:36,640 on both the USPTO website and our YouTube  channel we will send an email to everyone   6 00:00:36,640 --> 00:00:40,600 that registered for the program to let  you know when the recording is available 7 00:00:42,320 --> 00:00:47,360 the email with the recording will also contain  information on cle credits for attending today's   8 00:00:47,360 --> 00:00:53,120 presentation if you have questions during  the presentation today please email them to   9 00:00:53,680 --> 00:01:02,960 tm_webinar@USPTO.gov there will be time for  answers from the presenters at the end of   10 00:01:02,960 --> 00:01:08,640 the session if you are watching a recording of  this presentation please email your questions to   11 00:01:08,640 --> 00:01:16,960 tmpolicy@uspto.gov our presenters for today's  webinar are Mark rodemaker a legal policy   12 00:01:16,960 --> 00:01:25,840 staff attorney and Renee cervantes a managing  attorney and now i'll turn it over to Renee 13 00:01:28,440 --> 00:01:36,160 Good afternoon everyone welcome to our discussion  on specimens we're very glad to have you today um   14 00:01:37,120 --> 00:01:43,280 throughout this presentation you're going to have  an opportunity to interact with us through a few   15 00:01:43,280 --> 00:01:48,800 polls where you're going to step into the role as  the examining attorney so to get us ready we're   16 00:01:48,800 --> 00:01:55,520 going to open up a little icebreaker poll for you  you need to look to the right side of your screen   17 00:01:55,520 --> 00:02:02,720 look for a set of blue bar graphs with  an asterisk next to them click on that   18 00:02:02,720 --> 00:02:09,760 and that should open up a poll for you that asks  you some questions about the pandemic and how you   19 00:02:09,760 --> 00:02:13,520 are faring with those so we're  going to give you about 30 seconds   20 00:02:13,520 --> 00:02:21,840 to uh to respond to that poll so we can  make sure everybody knows how to do that 21 00:02:43,040 --> 00:02:45,280 okay this is your 10 second warning 22 00:02:47,760 --> 00:02:49,840 before we close the poll 23 00:03:02,400 --> 00:03:08,960 okay we're going to go ahead and close that poll  now now as i said um we're going to have you all   24 00:03:08,960 --> 00:03:16,480 interacting some with us today so hope that you  will find it helpful and instructive um i am a   25 00:03:16,480 --> 00:03:23,280 managing attorney and i have been with the office  for almost 15 years and i'm one of those folks who   26 00:03:24,880 --> 00:03:31,200 supervises the examining attorneys that you work  with i'm going to also introduce my partner today   27 00:03:31,200 --> 00:03:37,280 mark rodemaker mark good afternoon  everybody thanks for attending um   28 00:03:38,880 --> 00:03:41,520 i'm glad you're all here can  we go to the next slide please 29 00:03:43,600 --> 00:03:49,760 so why are specimens so important it's because  the uspto needs to evaluate these specimens   30 00:03:49,760 --> 00:03:55,200 to make sure that whatever mark registers  reflects how mark is used in the marketplace   31 00:03:55,200 --> 00:04:02,000 next slide now i'm not going to talk  about using commerce uh in depth   32 00:04:02,000 --> 00:04:08,480 instead i'm going to next slide just take a time  out to talk about the fact that use in commerce   33 00:04:08,480 --> 00:04:14,240 is something that you need to show during the  lifetime of a registration even after it registers   34 00:04:14,240 --> 00:04:17,840 in order to maintain your registration  you're going to need to show   35 00:04:17,840 --> 00:04:22,640 use and commerce at various points during its  lifetime and you'll need to provide specimens 36 00:04:25,280 --> 00:04:28,880 now there's a limited  exception for excusable non-use   37 00:04:28,880 --> 00:04:34,160 during the maintenance filing periods  and that's for non-use due to special   38 00:04:34,160 --> 00:04:38,800 circumstances that are beyond the owner's  control or forced by outside causes 39 00:04:41,280 --> 00:04:49,600 19 the pandemic may be a special circumstance  excusing non-use the key is that like any other   40 00:04:49,600 --> 00:04:55,520 special circumstance there needs to be an  explanation of how that special circumstance   41 00:04:55,520 --> 00:05:02,240 actually forced non-use of the mark for the goods  and services it's not probably enough to just say   42 00:05:02,240 --> 00:05:08,320 covet 19 forced us to stop using the mark with the  goods and services you have to connect the dots   43 00:05:08,320 --> 00:05:16,640 between how covert 19 forced non-use of the mark  in addition to that explanation of the special   44 00:05:16,640 --> 00:05:24,400 circumstances you're going to need to provide us  the date non-use began or you stopped and the date   45 00:05:24,400 --> 00:05:30,720 when use will resume as well as an explanation  of any steps being taken to resume use next slide 46 00:05:33,280 --> 00:05:36,880 so i'm not going to go into detail about  using commerce because i think you're   47 00:05:36,880 --> 00:05:43,280 all familiar with that at this  point next slide um next slide   48 00:05:43,280 --> 00:05:50,080 i'm going to turn it over to renee instead to  talk about acceptable specimens for goods renee   49 00:05:51,600 --> 00:05:59,920 okay so when you um when you submit a specimen  for goods you basically have two options   50 00:05:59,920 --> 00:06:08,240 um the most uh most specimens will actually  show the mark on the goods next slide 51 00:06:10,880 --> 00:06:17,920 next slide so if you look at this this  false graph mark on the bottom of this cup   52 00:06:18,960 --> 00:06:28,160 this is the type of uh specimen that will always  show uh specific and and and appropriate use   53 00:06:28,800 --> 00:06:37,760 for goods now um you can also give us a tag  or a label for the goods next slide please   54 00:06:39,120 --> 00:06:42,160 oh before i say that though let me talk about   55 00:06:43,680 --> 00:06:50,160 when you give us specimens if you look carefully  at this particular specimen this is for bottles of   56 00:06:50,160 --> 00:06:56,960 ink would be acceptable but it's only acceptable  because the label is completely visible in the   57 00:06:56,960 --> 00:07:02,160 middle if you look at the two bottles on the  outside if those were the specimens we would not   58 00:07:02,160 --> 00:07:08,560 be able to take that because the entire mark needs  to be visible on the specimen next slide please 59 00:07:11,120 --> 00:07:17,920 now so i got a little ahead of myself unattached  labels and tags are also acceptable however   60 00:07:17,920 --> 00:07:22,000 they need to have sufficient  product information so that we   61 00:07:22,000 --> 00:07:26,160 can see that there is a um first  of all that we can tell that it is 62 00:07:28,560 --> 00:07:31,360 in commerce but also so that  we can see that nexus between   63 00:07:31,360 --> 00:07:35,840 the goods that they are purporting  to show use for next slide please 64 00:07:38,400 --> 00:07:42,000 so this is an example of an acceptable label   65 00:07:42,640 --> 00:07:48,800 you'll notice that the mark is moon  time t over on the left you'll see that   66 00:07:49,520 --> 00:07:57,440 throughout this particular specimen there are  various different types of information that   67 00:07:57,440 --> 00:08:05,600 would typically be included on an actual label for  example there's the pricing barcode information   68 00:08:05,600 --> 00:08:13,600 there's a nutritional information there's also an  indication that the goods are organic we look for   69 00:08:13,600 --> 00:08:20,560 these types of information and criteria when  we have unattached labels next slide please   70 00:08:21,600 --> 00:08:29,360 this is an example of an unacceptable tag this  lacks all of that information and essentially   71 00:08:29,360 --> 00:08:36,240 is no different than either a printer's proof  or a rendering of the mark next slide please   72 00:08:38,880 --> 00:08:48,400 now the other option you have for a specimen for  goods is you can have a display they come in two   73 00:08:48,400 --> 00:08:53,520 types physical displays and electronic  displays so as to the physical display   74 00:08:53,520 --> 00:09:00,160 we're literally talking about you taking a  a picture of the goods for sale when they're   75 00:09:00,160 --> 00:09:10,400 set up in either a window shop or in some other  manner there are other types of displays that are   76 00:09:10,400 --> 00:09:15,600 described in more detail in the tmep but  the main thing is that it needs to show   77 00:09:15,600 --> 00:09:22,960 use of the goods at the point of sale next slide  please electronic displays are very similar   78 00:09:22,960 --> 00:09:28,800 so our catalogs however we look for the three  things you see on the slide and if any of them are   79 00:09:28,800 --> 00:09:34,720 missing we will usually have to issue a refusal  and a requirement for a substitute specimen   80 00:09:35,760 --> 00:09:44,640 next slide so if you look at this particular  example first click please you will see   81 00:09:45,360 --> 00:09:50,160 that we have a picture or description of the goods  through the eyeglasses and there's a description   82 00:09:50,160 --> 00:09:58,240 of the eyeglasses either works next click you will  see the mark clearly associated with the goods   83 00:09:58,240 --> 00:10:04,560 next click please and you will see up at the  upper right hand corner the shopping bag which   84 00:10:04,560 --> 00:10:11,200 is indicating that the goods are for sale on that  particular website that's really key next slide   85 00:10:12,720 --> 00:10:20,160 because that particular factor i would say  is a very common reason why we cannot take   86 00:10:20,800 --> 00:10:27,200 website evidence for goods because as you all know  we cannot take advertising for goods and if you   87 00:10:27,200 --> 00:10:36,080 don't have something like one of these types of  indications on your website specimen the specimen   88 00:10:36,080 --> 00:10:41,040 most of the time will fail as  advertising for goods next slide please 89 00:10:43,360 --> 00:10:49,120 now specimens for components or  ingredients are a special type of specimen   90 00:10:49,760 --> 00:10:56,320 there is a distinction between a component and  a finished product so let me give you an example   91 00:10:57,680 --> 00:11:05,200 if you think of a computer chip that is only sold  inside of computer hardware such as the intel   92 00:11:05,200 --> 00:11:11,600 chip that's an example of a component  type of good where you would have to show   93 00:11:11,600 --> 00:11:16,400 use on that component if you give  us a specimen just showing that   94 00:11:16,400 --> 00:11:23,280 mark associated with the hardware it fails to show  proper use in comp and commerce it has to show   95 00:11:23,840 --> 00:11:30,880 the component part being the goods rather than the  finished product another example would be clothing   96 00:11:31,600 --> 00:11:39,600 if a your client for example produces particular  fibers or particular fabrics that she used to make   97 00:11:39,600 --> 00:11:46,960 the clothing and markets it under a specific  trademark that specimen absolutely must show   98 00:11:47,680 --> 00:11:53,280 not the finished clothing associated with the  mark but fiber inside the clothing associated   99 00:11:53,280 --> 00:12:01,360 with the mark next slide please just a reminder  advertisements for goods almost always is going   100 00:12:01,360 --> 00:12:08,640 to be refused there are some exceptions for  example there are some specialized goods where 101 00:12:10,720 --> 00:12:17,600 specimens like brochures are used at the  point of sale to associate the product   102 00:12:18,560 --> 00:12:23,280 if you're going to give us something like that  you need to provide some kind of an explanation   103 00:12:23,280 --> 00:12:29,920 as to how that brochure is being used at  the point of sale don't assume just because   104 00:12:29,920 --> 00:12:36,160 we will theoretically take a brochure as a  specimen for goods that all brochures for   105 00:12:36,160 --> 00:12:41,280 specimens are acceptable next slide please  now we're going to open up a poll here   106 00:12:42,320 --> 00:12:46,880 as we're opening up the poll and remember  the way that you uh will access the polls   107 00:12:46,880 --> 00:12:53,440 is you will look at the left hand of your the  right hand of your screen for the bar graph and   108 00:12:53,440 --> 00:12:59,600 click on it once you see that little asterisk show  up i want you to look at this particular specimen   109 00:13:00,240 --> 00:13:05,520 and if you were an examining attorney i want  you to indicate in the poll whether or not   110 00:13:05,520 --> 00:13:12,800 you would refuse this specimen not similar to  the one we saw but look at it very carefully   111 00:13:14,080 --> 00:13:18,320 and remember those three factors that are required   112 00:13:19,280 --> 00:13:33,840 for an online specimen for goods we're  going to give you about 20 seconds 113 00:13:51,760 --> 00:14:01,840 okay we're gonna give you a 10  second warning at this point 114 00:14:12,240 --> 00:14:17,280 okay we're going to close the pole at this  point and you'll get a chance to see the results   115 00:14:18,960 --> 00:14:22,320 now hopefully next click 116 00:14:24,560 --> 00:14:32,080 you said no the reason is if you look very  carefully there is no means for ordering the goods   117 00:14:32,080 --> 00:14:40,960 here you do see the other two factors you see the  mark and you see a textural description of the   118 00:14:40,960 --> 00:14:46,800 goods but if you look carefully at this particular  example you are not going to find that there is a   119 00:14:46,800 --> 00:14:52,560 way to purchase the goods so this would be refused  as advertising for goods it looks like most of   120 00:14:52,560 --> 00:14:58,720 us caught that so excellent job on your first  day as an examining attorney next slide please 121 00:15:03,360 --> 00:15:09,040 all right so at this point i'm going to  turn you over to my partner crime mark   122 00:15:10,400 --> 00:15:16,160 thanks renee so what about services so  specimens for services are a little less   123 00:15:16,160 --> 00:15:21,520 rigid than specimens for goods there are basically  two flavors here there's the most common type of   124 00:15:21,520 --> 00:15:26,640 specimen for services which is advertising which  renee just talked about not being acceptable for   125 00:15:26,640 --> 00:15:34,480 goods generally speaking um advertising is a  perfectly good specimen for services another   126 00:15:34,480 --> 00:15:42,000 type or another flavor of specimen for services is  a rendering type specimen or a specimen that shows   127 00:15:42,000 --> 00:15:48,160 the mark in the context of the service activity  actually being performed next slide please   128 00:15:49,760 --> 00:15:54,000 so in either case there has to be  this direct association between the   129 00:15:54,000 --> 00:16:00,240 mark and the services in the application or the  registration in consumers minds next slide please   130 00:16:02,160 --> 00:16:05,840 for advertising generally that means there's  going to have to be some sort of reference   131 00:16:05,840 --> 00:16:11,120 to the services in the advertising and  then the mark has to be used to identify   132 00:16:11,120 --> 00:16:17,920 the services listed in the in the id  of the application next slide please 133 00:16:21,520 --> 00:16:28,560 for rendering we might not necessarily see an  explicit reference to the services um instead   134 00:16:28,560 --> 00:16:34,320 we can infer from the context or environment  that the services are being performed and the   135 00:16:34,320 --> 00:16:42,800 mark is appearing in that context now one caveat  with this is that if you do submit a specimen   136 00:16:42,800 --> 00:16:46,320 that doesn't have reference to the services  and you're thinking oh this is a rendering   137 00:16:46,880 --> 00:16:52,320 type specimen if it's not clear to the examining  attorney you're probably going to get a refusal   138 00:16:52,320 --> 00:16:56,880 so this is an opportunity for you to in  the maybe specimen description to give   139 00:16:56,880 --> 00:17:02,800 as much context to the specimen as possible to  enable the examining attorney to confidently   140 00:17:02,800 --> 00:17:10,560 make a decision as to whether it's an acceptable  rendering specimen next slide please so here's   141 00:17:12,320 --> 00:17:19,840 down pat a perfect example of an advertising  specimen for services you'll see this is a   142 00:17:19,840 --> 00:17:25,600 web page it's the mark is urban law furnishings  the services are online retail store services   143 00:17:25,600 --> 00:17:31,760 featuring furniture and you'll see that there's  the mark on the top of the page and then in the   144 00:17:31,760 --> 00:17:36,640 who we are section there's a description of the  services as being a trend setting online furniture   145 00:17:36,640 --> 00:17:41,360 store so there's a reference to the service  there's the mark appearing there and there's   146 00:17:41,360 --> 00:17:49,920 a direct association between the two next slide  please now here's an unacceptable specimen because   147 00:17:49,920 --> 00:17:57,920 we don't have enough of a description of the  services in the in the specimen itself to give us   148 00:17:57,920 --> 00:18:05,040 enough idea of what services are being performed  under the mark although you don't necessarily have   149 00:18:05,040 --> 00:18:10,720 to spell out what the services are word word for  word in the specimen there has to be enough there   150 00:18:10,720 --> 00:18:16,000 that it's not left completely to the imagination  as to what the services are being provided are   151 00:18:17,520 --> 00:18:22,560 here the mark is iobit and then we'll reproduce  the description in the purple box in the next   152 00:18:22,560 --> 00:18:29,760 slide next slide and this is for computer  programming services maintenance of computer   153 00:18:29,760 --> 00:18:35,760 software uh research and development and computer  saw in the field of computer software and a host   154 00:18:35,760 --> 00:18:43,680 of other software related services that box that  we just saw doesn't have enough of a reference to   155 00:18:43,680 --> 00:18:50,560 the type of service to make it acceptable for the  service mark they say we also promise that we'll   156 00:18:50,560 --> 00:18:56,000 keep providing first-class free software and uh  and online service for personal or commercial   157 00:18:56,000 --> 00:19:02,080 use or non-commercial use there's a reference to  software there they're providing software somehow   158 00:19:02,080 --> 00:19:07,120 but the online service were completely in the dark  as to what that might be similarly in the second   159 00:19:07,120 --> 00:19:14,080 paragraph they talk about being a windows system  service provider again we don't know what type of   160 00:19:14,080 --> 00:19:19,760 service provider they are here so this was found  to be an unacceptable specimen for these services   161 00:19:20,320 --> 00:19:28,160 next slide please so what about signage  signage can be a great specimen for services um   162 00:19:29,440 --> 00:19:35,920 just be careful that there be enough there to  reference the service in addition to the mark   163 00:19:35,920 --> 00:19:44,000 the case i'm referring to here is in ray republic  national llc where the service provider provided   164 00:19:44,000 --> 00:19:51,680 a specimen that just simply reproduced the mark on  the door to the offices of the applicant there was   165 00:19:51,680 --> 00:19:58,720 no reference to the service and as a result the  board found that the specimen was unacceptable   166 00:20:00,480 --> 00:20:04,720 next slide please so what about software specimens   167 00:20:05,920 --> 00:20:13,360 the uspto makes this distinction between  software as a service and software isn't good   168 00:20:14,000 --> 00:20:21,600 and you're going to have to identify your software  in one of the two ways effective january 2019 169 00:20:24,080 --> 00:20:30,480 even though the consumer may not care whether  they're being provided the software as a   170 00:20:30,480 --> 00:20:35,600 service or software as a good the pto makes that  distinction between the good and service and the   171 00:20:35,600 --> 00:20:41,360 types of specimens which are acceptable for a good  may not be acceptable for services and vice versa 172 00:20:44,000 --> 00:20:48,160 so for goods you can software as goods um   173 00:20:49,040 --> 00:20:53,120 specimens can be any of the traditional  types of good specimens packaging   174 00:20:53,120 --> 00:20:59,440 record the mark on the recording itself these  are less common these days um so you might want   175 00:20:59,440 --> 00:21:03,680 to show the mark on the display screen for the  software or a screenshot of the software running   176 00:21:05,040 --> 00:21:12,080 if it's downloadable software again you'll have  to show that it's there's an association between   177 00:21:12,080 --> 00:21:16,880 the mark and the software and that there's  a means to purchase or download the software 178 00:21:19,120 --> 00:21:25,920 next slide so a means to purchase or download  means just that it can't be something that   179 00:21:28,320 --> 00:21:32,720 leads to a purchase it has to be a means  to actually purchase their download   180 00:21:32,720 --> 00:21:38,720 for example in in-rate pure storage inc a  requested demo button was found insufficient   181 00:21:39,600 --> 00:21:45,200 to be an acceptable specimen for software  downloadable software because requested demo   182 00:21:45,200 --> 00:21:52,720 generally says generally indicates that the  owner or the consumer is going to experience   183 00:21:52,720 --> 00:21:57,360 the software but not necessarily purchase it the  purchase will happen somewhere downstream of the   184 00:21:57,360 --> 00:22:04,400 demo so this was an unacceptable specimen for  downloadable software or yeah next slide please   185 00:22:06,240 --> 00:22:13,280 here's an acceptable specimen for downloadable  software click you can see the mark portal 186 00:22:16,640 --> 00:22:24,400 next line please you can see the mark portal  click at the top of the specimen and you can   187 00:22:24,400 --> 00:22:32,480 also see the means to download the little cloud  icon click there on the screenshot from the phone   188 00:22:33,760 --> 00:22:36,880 this is a perfectly acceptable  specimen for downloadable software   189 00:22:38,080 --> 00:22:43,840 next slide please now we're going to take  a timeout and put you in the shoes of the   190 00:22:43,840 --> 00:22:50,960 examining attorney again and open a poll to  see why you would refuse this specimen um   191 00:22:52,880 --> 00:22:56,400 let me know why you would refuse  it or if you would refuse it at all   192 00:22:56,960 --> 00:23:03,760 the mark is botnet it's for downloadable  computer game software and the specimen is   193 00:23:03,760 --> 00:23:21,840 described as a website used in commerce i'll  give you a few seconds to complete the poll 194 00:23:41,200 --> 00:23:49,840 okay i'll give you a 10 second warning 195 00:23:52,560 --> 00:23:54,400 and we'll close the poll 196 00:24:02,080 --> 00:24:05,360 and see what the results were um   197 00:24:07,280 --> 00:24:11,920 if you look at the specimen closely you'll see  the mark you'll see a description of the software   198 00:24:11,920 --> 00:24:17,280 you'll see even screenshots of the software so the  mark is there there's an association between the   199 00:24:17,280 --> 00:24:23,680 goods the downloadable game software and the mark  however in this case there's no means to download   200 00:24:24,320 --> 00:24:31,840 so if you answered no means to  download or purchase we agree with you 201 00:24:35,920 --> 00:24:44,400 next slide please so what about user manuals for  software user manuals under the ultra flight case   202 00:24:44,400 --> 00:24:51,280 can be acceptable for software um the only thing  to be careful is that it's actually a user manual   203 00:24:51,280 --> 00:24:59,520 for software and not another type of manual that  has another purpose other than to show how how to   204 00:24:59,520 --> 00:25:09,200 use the software the case on this is in-rate  user first next slide please here the   205 00:25:09,200 --> 00:25:16,880 applicant submitted a pdf instruction manual  with the mark user first placed on the cover   206 00:25:17,680 --> 00:25:22,640 and the board found that this was not an  acceptable specimen for software because   207 00:25:23,440 --> 00:25:28,000 this specimen referred to  certification training lab   208 00:25:28,000 --> 00:25:32,480 which kind of raised the question as to whether  this was an actual user manual for software 209 00:25:36,800 --> 00:25:37,680 next slide please 210 00:25:41,040 --> 00:25:49,120 so what about online non-downloadable software  specimens um just like any other service specimen   211 00:25:49,120 --> 00:25:55,840 you have to show a direct association between  the mark and the services in consumers minds   212 00:25:56,720 --> 00:26:04,720 so it's just like any other type of service mark  specimen next slide please however you might want   213 00:26:04,720 --> 00:26:12,320 to keep in mind that because we know that a login  screen isn't is a it's a way that online software   214 00:26:12,320 --> 00:26:19,120 is accessed will accept a login screen without  necessarily a complete textual description of what   215 00:26:19,120 --> 00:26:26,880 the software is it's helpful but it's unnecessary  so online non-downloadable software specimen could   216 00:26:26,880 --> 00:26:33,920 be acceptable as just a login screen the next  slide please here's an example of that you can   217 00:26:33,920 --> 00:26:43,040 see the mark in the upper left hand corner click  please and you can see the fields for logging in   218 00:26:43,040 --> 00:26:48,080 to the online non-downloadable software in the  center right of the of the screen click please   219 00:26:49,920 --> 00:26:54,000 this is perfectly acceptable for online  non-downloadable software even though there   220 00:26:54,000 --> 00:26:58,720 isn't necessarily a textual description  of what the software is doing because   221 00:26:58,720 --> 00:27:05,840 this is a generally recognized way to access  online non-downloadable software next slide 222 00:27:08,480 --> 00:27:14,800 so what about services um that are  being provided through software   223 00:27:16,480 --> 00:27:22,800 versus just providing the software itself it's  hard to make that distinction sometimes and the   224 00:27:22,800 --> 00:27:29,920 way we think about it is if the applicant  or owner is performing the service activity 225 00:27:32,080 --> 00:27:38,880 through the software the software's performing  that activity for the consumer then likely   226 00:27:38,880 --> 00:27:50,560 the specimen will be acceptable for services but  if the user if the user or consumer is performing   227 00:27:50,560 --> 00:27:56,880 that activity themselves then it's likely  going to be a specimen that's acceptable for   228 00:27:56,880 --> 00:28:06,080 software let's look at an example of that next  slide first click the mark here is curb karma   229 00:28:06,720 --> 00:28:13,200 and it's an app but the services you can see  here are actually a server service not the app   230 00:28:14,960 --> 00:28:21,600 and it's for online parking spot  matching and here the screenshots for the   231 00:28:22,560 --> 00:28:31,040 uh the app which are shown in the bottom right  corner click show that the app itself is making   232 00:28:31,040 --> 00:28:39,040 the matches is showing the consumer where  the parking spots are so here the software   233 00:28:39,040 --> 00:28:46,320 is performing that service activity matching  and not the consumer so this is an acceptable   234 00:28:46,320 --> 00:28:54,800 specimen for the services of online matching of  parking space with consumers next slide please 235 00:28:57,440 --> 00:29:04,640 so what about social media specimens social media  specimens are just like any other specimen so you   236 00:29:04,640 --> 00:29:12,480 have to um make sure they meet the requirements  for good specimens if if this specimen is for   237 00:29:12,480 --> 00:29:18,080 goods or service specimens if the specimen is for  services the one thing to kind of tread lightly   238 00:29:18,080 --> 00:29:25,280 around or be careful of is that you're not is  to be careful of whether or not you're actually   239 00:29:25,280 --> 00:29:31,520 providing the social networking service in many  cases the applicant or owner is probably not   240 00:29:31,520 --> 00:29:35,920 providing the social networking service they're  probably providing some other service that's   241 00:29:35,920 --> 00:29:43,360 being advertised through the social networking  service and the case on point here is in rayford   242 00:29:44,080 --> 00:29:51,200 forest trans world delivery there's ftd had  a mark state your way for creating an online   243 00:29:51,200 --> 00:29:59,760 community of registered users to engage in social  networking and they provided as their specimen   244 00:30:00,720 --> 00:30:08,480 printouts from their twitter web pages or yeah  twitter pages and it showed ftd interacting with   245 00:30:08,480 --> 00:30:16,560 its consumers on twitter but this was not enough  to show that ftd was actually providing the social   246 00:30:16,560 --> 00:30:22,560 networking service itself the board found that  although they were taking advantage of the forum   247 00:30:23,280 --> 00:30:30,400 to social network ftd wasn't providing the  forum or the means to social network uh   248 00:30:31,040 --> 00:30:36,800 in the specimens it was twitter that was  providing the forum not ftd next slide please   249 00:30:37,920 --> 00:30:44,960 so here's a good example of a social media type  specimen notice it's not for social media it's for   250 00:30:45,600 --> 00:30:52,320 fast food restaurant services click and the mark  is sam burgers and you can see that in the left   251 00:30:52,320 --> 00:30:59,040 side of the facebook page and it's for restaurants  and you can see a reference to the restaurants   252 00:30:59,040 --> 00:31:06,800 on the bottom of the page click um and so you  have the mark and a reference to the services   253 00:31:06,800 --> 00:31:11,840 an association between the mark and the services  and this is a perfectly acceptable specimen for   254 00:31:12,400 --> 00:31:23,920 restaurants next slide please that is to say  that social media specimens would never be   255 00:31:23,920 --> 00:31:30,320 good for goods um there there are cases  where you can actually purchase things   256 00:31:31,040 --> 00:31:36,960 within a social media post for example twitter  has a buy button on some of its tweets that   257 00:31:36,960 --> 00:31:43,360 allow purchases to be made within the tweet again  this has to meet the requirements for any kind of   258 00:31:43,360 --> 00:31:49,120 electronic display for goods it has to contain a  picture or textual description of the goods it has   259 00:31:49,120 --> 00:31:54,160 to show the mark in association with the goods  and there has to be that means for ordering or   260 00:31:54,160 --> 00:32:00,800 purchasing the goods which is usually where people  get tripped up now i'm going to switch gears   261 00:32:00,800 --> 00:32:06,720 and turn it over to renee who's going to talk  about specimens that are not in use in commerce 262 00:32:09,200 --> 00:32:21,680 okay so um next slide please there are basically  three categories of specimens that we see that are   263 00:32:21,680 --> 00:32:29,040 not in use in commerce they are either digitally  created drawings of the goods rather than   264 00:32:29,040 --> 00:32:36,080 images of the actual goods themselves  or they are digitally altered where   265 00:32:36,080 --> 00:32:41,840 an existing image has been altered  using some type of editing software   266 00:32:42,400 --> 00:32:51,360 to append a different trademark onto an existing  product generally an existing third party product   267 00:32:52,160 --> 00:32:57,920 and then there are mock-ups mock-ups are generally  non-digital but it's generally a situation where   268 00:32:57,920 --> 00:33:11,280 someone creates either stickers or labels that  are used to simply submit with the application   269 00:33:11,280 --> 00:33:17,440 in all cases though uh when the if these goods  are actually not in use goods or services   270 00:33:17,440 --> 00:33:24,800 are actually not in use in commerce they're  going to draw a refusal next slide please so 271 00:33:28,320 --> 00:33:34,960 fake specimens are a problem because they affect  the integrity of our registry and they also   272 00:33:36,640 --> 00:33:42,720 can reach over to uh constituting fraud on the  office so you're going to want to pay close   273 00:33:42,720 --> 00:33:48,000 attention to the specimens that your clients  give to you and make sure that you don't allow   274 00:33:48,000 --> 00:33:52,080 them to file anything that falls into any of  these categories now don't worry we're going   275 00:33:52,080 --> 00:33:57,840 to give you plenty of examples and you're going  to have a chance to interact with some polls to   276 00:33:57,840 --> 00:34:00,880 practice being able to spot  these next slide please 277 00:34:03,360 --> 00:34:12,880 all right now if an examining attorney sees  um any instances or red flags of a specimen   278 00:34:12,880 --> 00:34:16,480 that's not in use in commerce they're going  to refuse it and they're also going to issue   279 00:34:16,480 --> 00:34:24,640 a request for information the purpose is to  understand more about how these uh products   280 00:34:24,640 --> 00:34:31,280 it's usually products but can also be services  how these goods or services are sold in commerce   281 00:34:31,280 --> 00:34:38,240 if that's true and to also allow for correction  of the faulty specimen next slide please 282 00:34:40,480 --> 00:34:44,000 if you get an rfi you need  to do your best to answer it   283 00:34:44,000 --> 00:34:50,560 as completely and make sure it's accurate as  you can if you can't answer certain things   284 00:34:50,560 --> 00:34:54,880 you need to indicate that in the  in your response next slide please 285 00:34:58,240 --> 00:35:05,120 now of course you can always respond by  amending your filing bases to a non-use-based   286 00:35:05,840 --> 00:35:15,840 filing basis um and or you can of course give us  a second substitute specimen next slide please   287 00:35:16,960 --> 00:35:20,800 now some of the things the examining  attorney going to look for it's a long list   288 00:35:20,800 --> 00:35:26,720 so the next two slides are going to show you  some of the things that we look for to give   289 00:35:26,720 --> 00:35:33,280 us a tip-off that we may be dealing with  a specimen that's not in use in commerce 290 00:35:35,680 --> 00:35:41,600 overall i'm going to summarize these rather than  read them all to you overall we look for anomalies   291 00:35:41,600 --> 00:35:48,480 on that specimen we look to see are there  particular areas of specimen where the coloring is   292 00:35:48,480 --> 00:35:58,800 inconsistent where the stylistic criteria of the  lettering is different we look for areas that are   293 00:35:58,800 --> 00:36:08,320 blurred or unusually sharp next slide please we  look for areas that have different textures on the   294 00:36:08,320 --> 00:36:18,000 um on the image and we tend we also typically do  reverse image searching online so that we can find   295 00:36:18,000 --> 00:36:29,520 if a mark has been um simply uh attached to an  existing third-party product in any of those cases   296 00:36:30,240 --> 00:36:36,800 it's likely that the examining attorney is going  to refuse that as a digitally created or mock-up   297 00:36:36,800 --> 00:36:43,280 specimen next slide please all right so i promised  you some examples you're going to get plenty of   298 00:36:44,000 --> 00:36:50,480 uh of uh practice with that we're going  to open up a new poll and next slide 299 00:36:52,640 --> 00:36:58,560 now don't respond to the poll until i tell you  to i'm going to go over an example first now   300 00:36:58,560 --> 00:37:05,120 if you look at this particular set of specimens  you see an example of an unacceptable specimen   301 00:37:05,920 --> 00:37:11,840 and an acceptable specimen on the  left hand side is unacceptable because   302 00:37:12,560 --> 00:37:16,960 it is clearly not product packaging  this is a two-dimensional drawing   303 00:37:16,960 --> 00:37:23,040 of the mark it is not acceptable as  a label because it lacks any of those   304 00:37:23,920 --> 00:37:31,280 other criteria or information about the product  that would be expected on a label so the   305 00:37:31,280 --> 00:37:39,600 specimen to your left would be refused however if  you look on your right we see the actual box that   306 00:37:39,600 --> 00:37:46,720 the wine glasses are are packed inside so we have  an example of actual packaging and we can tell   307 00:37:46,720 --> 00:37:53,040 it's a three-dimensional box from the image we can  see additional information that would be typical   308 00:37:53,040 --> 00:37:58,960 on packaging so we would accept the specimen  on the right we would not accept the specimen   309 00:37:58,960 --> 00:38:05,120 on the left which amounts to little more than a  drawing or rendering of the mark next slide please   310 00:38:06,720 --> 00:38:13,680 this is an example of two specimens neither of  which are acceptable because these are specimens   311 00:38:13,680 --> 00:38:22,320 that were created digitally on a computer these  are not actual shirts and so when we see something   312 00:38:22,320 --> 00:38:29,840 like that we are not able to accept this because  this is clearly not the product itself and it   313 00:38:29,840 --> 00:38:36,000 is not the way that that product would be  encountered in commerce by actual consumers   314 00:38:36,000 --> 00:38:44,400 so be very careful some of these drawings can  be quite realistic and in no case is a drawing   315 00:38:44,400 --> 00:38:50,560 of the product with the mark on the product  and an acceptable specimen next slide please   316 00:38:52,480 --> 00:38:57,680 this one should be obvious this is an  example of a digitally altered specimen   317 00:38:57,680 --> 00:39:05,440 if you look at the actual product on your  right hand side you will see the actual correct   318 00:39:07,120 --> 00:39:14,800 take trademark but you look to your left and you  can see a specimen where the applicant has simply   319 00:39:15,920 --> 00:39:24,480 edited the image file of the third party product  and added their mark to a third party product this   320 00:39:24,480 --> 00:39:29,600 is the type of evidence that we typically will  uncover when we do our reverse image searching   321 00:39:30,160 --> 00:39:34,560 this would not be an acceptable  specimen next slide please 322 00:39:36,640 --> 00:39:42,000 these are examples of the mock-ups that i talked  about mock-ups think of it as think of a mock-up   323 00:39:42,000 --> 00:39:49,680 as a a bunch of made-up specimens that you just  create so you can submit your application the   324 00:39:49,680 --> 00:39:57,840 giveaways on these is that they would typically  just be plain labels that are taped to products   325 00:39:58,560 --> 00:40:06,160 they would typically um have we will oftentimes  see in copens different marks with the same types   326 00:40:06,160 --> 00:40:15,040 of labels on on all of the uh the different  products this is a type of situation where you   327 00:40:15,040 --> 00:40:22,000 would if if if it turned out that your client  and the unlikely event actually does uh market   328 00:40:22,000 --> 00:40:26,000 it this way you would need to you would need to  explain that very carefully in your request to   329 00:40:26,000 --> 00:40:33,840 your rfi however in most cases we would not accept  specimens that look like this next slide please 330 00:40:36,160 --> 00:40:41,120 now it's time for you to be an examining  attorney um i would like for you to examine   331 00:40:41,120 --> 00:40:48,080 the specimen very carefully and think about  the tip-offs that i talked about so look   332 00:40:48,080 --> 00:40:54,960 and see if you see any of those anomalies in  this specimen and we're going to open up our   333 00:40:55,520 --> 00:41:02,160 poll and if you see anything that you think  indicates that this is either digitally created   334 00:41:02,960 --> 00:41:10,720 or digitally altered or mock-up you should select  no but if you don't see any of that evidence   335 00:41:10,720 --> 00:41:19,840 you should select yes so we're  going to give you about 20 seconds 336 00:41:33,040 --> 00:41:33,840 10 second warning 337 00:41:48,800 --> 00:41:50,960 okay we're going to go ahead and close this poll 338 00:41:54,400 --> 00:42:02,240 and hopefully if you're the examining  attorney you would take this specimen   339 00:42:03,280 --> 00:42:08,800 now the things that the examining attorney  would be noticing it looks like and it looks   340 00:42:08,800 --> 00:42:14,320 like a lot of you would not take this specimen  all right well that's that's actually very good   341 00:42:14,320 --> 00:42:20,400 um that that opens up the discussion now i'm  going to tell you why you would take this specimen   342 00:42:20,400 --> 00:42:26,400 if you look very very carefully at the label look  at the stylization of the letters you'll see that   343 00:42:26,400 --> 00:42:32,320 it's consistent they're not a whole bunch of  different fonts you don't see odd color sticking   344 00:42:32,320 --> 00:42:39,040 out you also see the marks in the places on  the product that you would expect a mark to   345 00:42:39,040 --> 00:42:45,440 to show up because that's another tip off when we  see marks that are displayed in non-traditional   346 00:42:46,720 --> 00:42:52,480 fashions that's usually a dead giveaway that  specimen has been digitally altered or digitally   347 00:42:52,480 --> 00:43:00,560 created if you also look at the relative sizes of  the different marks on here you can certainly see   348 00:43:00,560 --> 00:43:08,240 marks and sub marks and the heel different mark  is down at the bottom where you would typically   349 00:43:08,240 --> 00:43:18,320 find a tag line or a secondary trademark so this  would actually be an acceptable specimen okay next   350 00:43:18,320 --> 00:43:25,840 slide now we're going to open up another poll  for you we want you to look at this particular   351 00:43:27,120 --> 00:43:36,240 specimen for golf shoes the mark is stealth  keeping in mind the factors and tip-offs that i've   352 00:43:36,240 --> 00:43:39,840 discussed with you today would  you refuse or which you allow 353 00:43:42,320 --> 00:43:53,840 i'm going to give you about 15 seconds 354 00:44:07,440 --> 00:44:09,040 all right five second warning 355 00:44:19,760 --> 00:44:29,040 okay we're gonna close this poll at this point and  hopefully if you're all good examining attorneys   356 00:44:29,040 --> 00:44:34,320 you would never accept this specimen the reason  is is that there are a number of anomalies on the   357 00:44:34,320 --> 00:44:41,840 specimen that would lead you to believe that this  is a specimen that's not in use in commerce the   358 00:44:41,840 --> 00:44:47,520 the the most obvious is the way that the mark  is placed on the shoe it's in a very unusual   359 00:44:48,160 --> 00:44:54,400 manner um shoe marks typically do not have the  mark on the side of the shoe they certainly are   360 00:44:54,400 --> 00:45:00,080 not crooked and if you look very closely at the  lettering of the word stealth you're going to see   361 00:45:00,080 --> 00:45:07,680 quite a lot of blurriness or pixelation of the  lettering there that pixelation is a pretty   362 00:45:07,680 --> 00:45:15,520 is a dead giveaway that there's probably two files  superimposed on each other and that there's noise   363 00:45:15,520 --> 00:45:23,760 around where the wording has been added to an  existing image so this is an example of a specimen   364 00:45:23,760 --> 00:45:31,840 that we would not accept next slide now we're  going to open another poll and give you a chance   365 00:45:33,040 --> 00:45:45,840 to look at yet another specimen i'm going to give  you just about 15 seconds on this one as well 366 00:46:03,520 --> 00:46:04,480 five second warning 367 00:46:10,880 --> 00:46:18,400 okay so we're going to close this poll  out and i can't wait to see the exact the   368 00:46:19,120 --> 00:46:25,920 results of this one hopefully no one would take  this specimen as well but this one is not as   369 00:46:25,920 --> 00:46:36,000 as a clear cut as it looks at first so some  of those of you who would not refuse i can   370 00:46:36,000 --> 00:46:43,760 kind of understand why you might not refuse it  however the two arrows show where the mark is the   371 00:46:45,280 --> 00:46:50,720 place it might the placement on the specimen  is unusual you typically will never see   372 00:46:50,720 --> 00:46:57,440 a mark on the actual end of the  flatware you usually see it if anywhere   373 00:46:58,240 --> 00:47:05,280 on the somewhere on the on the stem or  on the handle but now even though the   374 00:47:05,280 --> 00:47:10,720 mark appears on the handle here if you look  at it carefully it's actually upside down   375 00:47:11,600 --> 00:47:21,600 and that's unusual and that is consistent with  uh applying a file on top of an existing picture   376 00:47:21,600 --> 00:47:29,520 of a fork so at a minimum the examining attorney  would refuse this with a request for information   377 00:47:31,200 --> 00:47:38,480 most likely the best course of action here would  be to give a new specimen next slide please   378 00:47:40,240 --> 00:47:47,120 all right one more poll for you so we're going to  open that up and what i'm going to ask you to do   379 00:47:47,120 --> 00:47:55,120 is look at this it should be familiar to you and  the mark is healed different again for supplements 380 00:47:57,520 --> 00:47:58,020 and 381 00:48:00,800 --> 00:48:10,080 think about why you would explain to the applicant  if you would refuse and think about why you would   382 00:48:10,080 --> 00:48:19,840 allow this specimen if you would not refuse  we're going to give you 15 seconds on this one 383 00:48:33,760 --> 00:48:34,800 five second warning 384 00:48:45,040 --> 00:48:47,840 okay we're going to close this  poll so you can see the results 385 00:48:50,480 --> 00:48:59,280 now i want you to think about anomalies and  how this particular specimen is very different   386 00:48:59,280 --> 00:49:05,760 from the one you saw on the previous slide the  heel different contra contrary to the first   387 00:49:06,720 --> 00:49:12,880 time you saw this little bottle feel different  here is in a completely different style the   388 00:49:12,880 --> 00:49:18,800 wording is also extremely sharp very much sharper  than the rest of the image which is quite blurry   389 00:49:20,320 --> 00:49:26,640 we don't like blurry specimens by the way you  definitely want to give us good high quality   390 00:49:27,280 --> 00:49:34,480 image files now um if we saw this and we saw  the differences in the sharpness and also the   391 00:49:34,480 --> 00:49:40,160 differences in the color that very stark  black that would prompt a refusal for sure   392 00:49:41,040 --> 00:49:49,040 and um we also would note that the  wording heel different here seems to float   393 00:49:49,040 --> 00:49:56,480 above that blurrier image that's because of the  unusual sharpness of the wording and so this is   394 00:49:56,480 --> 00:50:01,840 a situation where you would definitely if this  is what your client gave you you want you would   395 00:50:01,840 --> 00:50:11,840 probably want to see if they have something  better to submit okay last poll next slide 396 00:50:16,800 --> 00:50:21,280 now look at this one very carefully too  this is our old friend moon time tea again   397 00:50:24,240 --> 00:50:27,200 you're going to get it i want you to look at  this very carefully because this looks pretty   398 00:50:27,200 --> 00:50:35,520 good to me tell me would you approve this  specimen or would you reject the specimen   399 00:50:37,360 --> 00:50:42,160 so would you refuse registration  based on this specimen yes or no 400 00:50:50,640 --> 00:50:53,840 10 second warning 401 00:51:02,960 --> 00:51:05,760 okay we're going to go ahead and close this poll   402 00:51:07,280 --> 00:51:12,480 now i am curious to see how many people would  accept this specimen because it is not acceptable   403 00:51:13,360 --> 00:51:19,360 it's not acceptable because this is a printer's  proof or at the at the very least it is a   404 00:51:20,160 --> 00:51:27,280 digitally created specimen how do we know because  of the machine language that's down in the bottom   405 00:51:27,280 --> 00:51:33,120 part in that little yellow section where you  see all of that sort of latinate language   406 00:51:33,120 --> 00:51:42,080 that's placeholder language that's usually a space  that's held in a printer's proof that where the   407 00:51:42,080 --> 00:51:47,280 client hasn't quite decided what's going to go  in that space and so they put lettering or this   408 00:51:47,280 --> 00:51:54,160 kind of wording in there when we see that kind  of placeholder language that is a dead giveaway   409 00:51:54,160 --> 00:52:01,920 that the specimen is not in use in commerce so it  looks like most of us got that around but around   410 00:52:01,920 --> 00:52:08,400 500 of us might have missed that issue those  are the types of things you're going to want to   411 00:52:09,520 --> 00:52:13,280 really look for before you submit  your specimens from your clients   412 00:52:13,920 --> 00:52:21,040 okay next slide and i'm going to turn  you now back over to my partner mark 413 00:52:23,600 --> 00:52:28,400 thanks renee um let's talk about web  page url and access date for a second   414 00:52:30,080 --> 00:52:37,600 beginning last year february of last year every  web page specimen must include its url and access   415 00:52:37,600 --> 00:52:44,640 date to be acceptable now there's a there's an  exception which we'll talk about in a second but   416 00:52:44,640 --> 00:52:49,600 generally speaking for web pages you have to  provide the url and access date you can provide   417 00:52:49,600 --> 00:52:54,880 it any way you want there's no specific way to  provide it you can provide it directly on the   418 00:52:54,880 --> 00:53:01,680 specimen itself you can provide it within the form  you can provide it in a later filed response as   419 00:53:01,680 --> 00:53:09,600 long as that statement is verified next slide  please so you'll see in a minute the forms   420 00:53:10,400 --> 00:53:21,120 and uh there are special fields for providing the  url and access date but if you can't have trouble   421 00:53:21,120 --> 00:53:27,280 finding them or using them you can put them other  places in the form you can put it in the specimen   422 00:53:27,280 --> 00:53:32,960 description in the miscellaneous statement or  in the arguments for example next slide please 423 00:53:36,000 --> 00:53:39,200 here's an example of the easiest  way to get us that information   424 00:53:39,200 --> 00:53:43,200 this is just simply taking a  screenshot of your computer screen   425 00:53:43,200 --> 00:53:50,640 with the web page of interest open the  mark here is the farnum it's for hotels   426 00:53:52,800 --> 00:53:59,760 you can see that that captures the url at the top  of the page and it captures the time and date you   427 00:53:59,760 --> 00:54:04,400 access this page at the bottom of the page because  you've taken a screenshot of the computer screen 428 00:54:06,720 --> 00:54:13,680 next slide please alternatively you can  invest in some screen capture software   429 00:54:14,320 --> 00:54:23,040 and there you when you capture the web page it  won't necessarily capture the the entire screen of   430 00:54:23,040 --> 00:54:28,400 the computer with including the url and the access  date as we saw in the previous slide but it will   431 00:54:29,120 --> 00:54:35,680 print that information at the top of the specimen  or somewhere around where the specimen is being   432 00:54:35,680 --> 00:54:42,000 submitted and here you can see the access date and  url are provided by the screen capture software   433 00:54:43,120 --> 00:54:50,320 next slide please so here's a look at the form  this is an application form you can see that   434 00:54:50,320 --> 00:54:56,880 the arrows are pointing to web page specimen  fields that are that uh include space for the url   435 00:54:57,680 --> 00:55:03,520 and the access date there's a button if you need  to provide more just click the add additional url   436 00:55:03,520 --> 00:55:09,920 and dates and you can add additional urls and  dates next slide please and similarly in the   437 00:55:09,920 --> 00:55:15,200 response form there's space dedicated to providing  this information to us we're trying to make it   438 00:55:15,200 --> 00:55:22,320 as easy as possible for for you all to get that  information to us now let's talk about next slide   439 00:55:24,080 --> 00:55:32,560 an exception so if the web page contains a good  picture of the mark of the goods bearing the mark   440 00:55:33,200 --> 00:55:37,920 the url and access date are not necessary  the key here is that the picture itself   441 00:55:37,920 --> 00:55:42,240 has to be a good picture it can't be a  computer generated picture it can't be a   442 00:55:44,560 --> 00:55:51,440 digitally altered picture or any other kind  of mess with picture it has to be an actual   443 00:55:51,440 --> 00:55:56,160 good picture of the goods and if that's the  case we don't need to rely on the web page   444 00:55:56,160 --> 00:56:02,000 itself we're relying on the picture next  slide please and here's an example of that   445 00:56:02,000 --> 00:56:08,560 gnc for vitamins there's a good picture of the  packaging here bearing the mark although it's a   446 00:56:08,560 --> 00:56:16,400 web page type specimen we don't need the url and  access date for acceptable to accept the specimen 447 00:56:18,880 --> 00:56:23,760 now i'm going to turn it back over to renee to  talk about some things to avoid when submitting   448 00:56:23,760 --> 00:56:33,520 specimens thank you mark now when you're trying  to decide whether or not to submit a specimen to   449 00:56:33,520 --> 00:56:38,160 us from your client there are a few things you're  going to want to do as your due diligence first   450 00:56:38,160 --> 00:56:44,640 thing is you it's always helpful for an examining  attorney if we have questions and we need to call   451 00:56:44,640 --> 00:56:50,960 and contact you if we're confused about you know  just what are we looking at sometimes if you are   452 00:56:50,960 --> 00:56:58,400 knowledgeable about that specimen so be sure and  discuss with your clients about the specimens that   453 00:56:58,400 --> 00:57:09,280 are going to be submitted um make sure that the  quality is it's good quality yeah it's difficult   454 00:57:09,280 --> 00:57:17,440 when the specimens and art come in are of marginal  quality blurry difficult to read we typically   455 00:57:17,440 --> 00:57:24,000 won't refuse a specimen if we can figure out we  can see enough of it to make out the mark and   456 00:57:25,520 --> 00:57:30,560 make sure that it complies with the requirements  of a specimen even if it's not in the greatest   457 00:57:31,520 --> 00:57:35,760 greatest quality but it's always helpful if  you give us something that's nice and clear   458 00:57:36,880 --> 00:57:42,480 next slide please if you're going to  give us a display make sure that you   459 00:57:42,480 --> 00:57:46,400 give us the entire display so that  we see as much of it as possible 460 00:57:48,560 --> 00:57:56,320 we sometimes get closely cropped  displays where maybe there's only one   461 00:57:58,000 --> 00:58:04,560 good showing on a table and it's difficult  to uh to determine whether that's an actual   462 00:58:04,560 --> 00:58:10,560 display or if it's just a picture of  the mark that and mark's not actually   463 00:58:10,560 --> 00:58:17,040 on the on the product um and then it's  always helpful for us if you highlight   464 00:58:17,040 --> 00:58:23,120 or put arrows at places where you feel the  mark is showing proper use next slide please   465 00:58:25,760 --> 00:58:32,240 now i'm going to say this a third time  about brochures for goods uh specimens   466 00:58:33,040 --> 00:58:41,520 generally they are not going to be acceptable so  avoid giving us brochures as uh as as specimens   467 00:58:41,520 --> 00:58:46,000 for goods if you do give us brochures  though you definitely need to also give us   468 00:58:46,560 --> 00:58:54,080 a um a an explanation as to how those  brochures are used at the point of sale   469 00:58:54,880 --> 00:58:59,760 now you should also consider giving us a couple  of good specimens now let me be very careful   470 00:58:59,760 --> 00:59:07,840 about what i mean by this i am not suggesting  that you just throw everything you have at us   471 00:59:07,840 --> 00:59:14,400 and hope something fits no what i'm saying is  if you have a couple of really good specimens   472 00:59:15,360 --> 00:59:20,480 give us those couple of good specimens so that  on the off chance there's something wrong with   473 00:59:20,480 --> 00:59:26,240 the one that you were going to submit a loan if  there is one that is acceptable we'd be able to   474 00:59:26,240 --> 00:59:33,600 go ahead and accept that specimen and not have to  send you an office action i want to be very clear   475 00:59:33,600 --> 00:59:42,640 that what we do not want to see are any specimens  that would be digitally altered digitally created   476 00:59:42,640 --> 00:59:50,320 or mock-ups as multiples of the specimen those  are not acceptable and you should not allow your   477 00:59:50,320 --> 00:59:54,720 client to put those into your  application okay next slide please 478 00:59:56,960 --> 01:00:06,720 um next slide please now we've come to the end  and um again we want to thank you for coming   479 01:00:07,760 --> 01:00:15,920 here are some resources and some areas where  you can learn more about specimens and specimen   480 01:00:15,920 --> 01:00:27,840 issues i'm going to turn it back over to tasha  and she's going to open the floor for questions 481 01:00:40,560 --> 01:00:42,720 okay tasha we can't hear you 482 01:00:48,640 --> 01:00:55,680 and let's go to the next slide too so that if  anybody needs to submit a question what we're   483 01:00:55,680 --> 01:01:01,760 going to do is ask you to send them that to the  email that you see on the slide here all right   484 01:01:01,760 --> 01:01:08,640 here we go so the first question is will you  please discuss book specimens for for instance   485 01:01:08,640 --> 01:01:17,200 if it's a series name but it's on one the  spine two the back of the book cover or three   486 01:01:17,200 --> 01:01:25,040 on the inside title page do those qualify so  for book specimens you certainly do of course   487 01:01:25,040 --> 01:01:33,600 have to show a series so as you avoid that  title of a single work refusal we look for   488 01:01:34,240 --> 01:01:43,840 those uses to be in the traditional places that  one would find the producer of the book so if it's   489 01:01:43,840 --> 01:01:49,120 a series yes we look to see if it's on the spine  we can certainly see it on the back book cover   490 01:01:50,240 --> 01:01:56,560 possibly it could be on the the inside title  page so there's no one answer to book specimens   491 01:01:57,120 --> 01:02:03,280 but what i would say is that it needs to be  distinguishable from the title of the book   492 01:02:04,320 --> 01:02:07,840 all right i'm going to turn into mark mark  has a there's a question directed to you   493 01:02:08,800 --> 01:02:15,440 sure um the question is is there a rule regarding  how will the website screenshot specimen should be   494 01:02:15,440 --> 01:02:19,840 in order to be accepted by the trademark office  for statements of use maintenance filings etc   495 01:02:20,480 --> 01:02:27,600 for example website screenshot may be submitted  with a registration that doesn't isn't dated   496 01:02:29,120 --> 01:02:35,120 within a certain time period of filing and there's  a two-part answer to that question the first part   497 01:02:35,120 --> 01:02:43,200 is for purposes of application or filing an  sou or an aau there's no hard and fast rule for   498 01:02:43,840 --> 01:02:51,280 um how contemporaneous that specimen has  to be but a good practice is to make it   499 01:02:51,280 --> 01:02:55,840 as contemporaneous as possible so that it  represents use of the time you're filing   500 01:02:57,600 --> 01:03:03,840 it's a little bit different post registration  for post registration filings of course   501 01:03:03,840 --> 01:03:09,360 there has to be we're we're asking that you show  current use of the mark so in other words use   502 01:03:09,360 --> 01:03:16,560 the mark in the statutory period for filing  your section 8 or 71. in that case if the   503 01:03:16,560 --> 01:03:21,360 if the web page specimen is dated outside  that statutory period when you're filing   504 01:03:21,360 --> 01:03:26,240 it will not be accepted because it doesn't  show current use of the mark in commerce 505 01:03:28,800 --> 01:03:34,720 okay so we have a question when filing  an sou would you accept specimens that   506 01:03:34,720 --> 01:03:40,080 show the registration symbol adjacent to  the mark the answer to that is it depends   507 01:03:40,880 --> 01:03:46,160 um you all know the rule that you should not be  displaying the registration symbol unless you have   508 01:03:46,160 --> 01:03:51,520 a registered mark and there is the distinction  right there you have a prior registration   509 01:03:52,240 --> 01:03:58,720 for that mark you may have a standard character  version or you may have a stylized version that's   510 01:03:58,720 --> 01:04:07,520 different from the the instant application there's  no problem with having the registration symbol   511 01:04:07,520 --> 01:04:14,720 on your specimen if on the other hand you  have not registered a trademark with the uspto   512 01:04:16,640 --> 01:04:21,760 you really should not be displaying  that symbol on your specimen until   513 01:04:21,760 --> 01:04:29,840 you actually have a registration okay we  have another question um the question is   514 01:04:31,680 --> 01:04:37,680 if a specimen is unacceptable and you change  the website to more adequately reflect uh i   515 01:04:37,680 --> 01:04:42,400 guess acceptability could the substitute specimen  cure the problem or must the specimen have existed   516 01:04:42,400 --> 01:04:49,760 by a particular point in time the answer to that  question is that you have to show use and you're   517 01:04:49,760 --> 01:04:56,160 swearing to use as of the filing date or  the filing date of the statement used or aau   518 01:04:56,880 --> 01:05:02,160 so if it's not reflecting use as of that date  it probably isn't acceptable and shouldn't be   519 01:05:02,160 --> 01:05:12,000 submitted if you go ahead oh oh i'm sorry did  you finish that question i did okay all right so   520 01:05:12,000 --> 01:05:18,320 here's another question please address means of  ordering in a catalog is a phone number to call   521 01:05:18,320 --> 01:05:24,560 in an order sufficient what about the websites for  goods that are industrial or highly specialized or   522 01:05:24,560 --> 01:05:32,080 expensive products and therefore there is no buy  now option but a request for quote button and what   523 01:05:32,080 --> 01:05:38,400 about when there's no buy now option and there's  a request for quote button instead okay there's a   524 01:05:38,400 --> 01:05:47,360 lot to unpacking that question all right so what  i'm going to say about the means of ordering in a   525 01:05:47,360 --> 01:05:55,200 catalog is we we follow the case law the case  law uh requires things like an order page um   526 01:05:56,080 --> 01:06:03,600 uh we also you know want to be able to see that  there's some kind of an order form not just a   527 01:06:03,600 --> 01:06:11,360 phone number and a web page that's generally  not going to meet the requirements for catalog   528 01:06:13,280 --> 01:06:19,760 now as far as industrial or highly specialized or  expensive goods where one would not actually order   529 01:06:19,760 --> 01:06:27,920 them online that gets into a situation  where we have to consider what are the   530 01:06:27,920 --> 01:06:31,920 customs in that particular industry  and that's where you can be helpful   531 01:06:31,920 --> 01:06:35,680 when you give us the specimen you can  give some of that background information   532 01:06:36,640 --> 01:06:45,840 that said you know if you you if you give us  a specimen that is a website it needs to be a   533 01:06:46,560 --> 01:06:54,880 it has to be distinguishable from something that  would just advertise that the goods are available   534 01:06:55,440 --> 01:07:03,280 it's got to cross over into into the land of we're  now offering you a means for purchasing the goods   535 01:07:03,280 --> 01:07:10,240 so requesting a demo is probably in the same  category as the demo button that we talked about   536 01:07:10,240 --> 01:07:19,040 with regard to software it doesn't necessarily  offer a um it's not an offer of sale so much as   537 01:07:19,040 --> 01:07:26,080 it is an offer to try and inspect the goods and  in that case it's not going to be able to show an   538 01:07:26,080 --> 01:07:34,240 online electronic point-of-sale display um so  yeah so hopefully that answers that question 539 01:07:37,280 --> 01:07:42,320 okay we have another question um this one's  pretty simple are labels okay even if they're   540 01:07:42,320 --> 01:07:49,360 purely digital and the short answer to that  question is probably not no because the specimen   541 01:07:49,360 --> 01:07:56,080 has to show mark as actually used in commerce so a  digital label is something that wouldn't be placed   542 01:07:56,080 --> 01:08:01,200 on the goods and put into the stream of commerce  so it wouldn't be acceptable as a specimen   543 01:08:02,720 --> 01:08:09,600 okay all right so here we have another question  if the download button is behind a paywall that   544 01:08:09,600 --> 01:08:18,080 is only members can download but the public can  view and use but not download with that specimen   545 01:08:19,200 --> 01:08:27,040 that shows an image from behind the paywall be  refused because the only the only members only   546 01:08:27,040 --> 01:08:34,000 the members can download i apologize i'm trying  to edit this as i'm reading it that is if the   547 01:08:34,000 --> 01:08:41,200 trademark examiner went to the site they would  not see the download option okay so i think   548 01:08:41,200 --> 01:08:50,720 what you're asking is if it's not obvious that you  could download the software on the specimen would   549 01:08:50,720 --> 01:08:57,280 we refuse it i apologize if that's not what you're  asking and the answer to that is yes we would have   550 01:08:57,280 --> 01:09:05,520 to refuse that because downloadable software is a  good and if what we're looking at is simply giving   551 01:09:05,520 --> 01:09:13,680 us information about software it then falls into  the category of being merely advertising now um   552 01:09:14,240 --> 01:09:21,280 probably you know the best way is that there  is a way for folks to actually download the   553 01:09:21,280 --> 01:09:27,520 goods and it really doesn't matter that only  members can see it if the customers are members   554 01:09:27,520 --> 01:09:36,000 then you know by all means give us the specimen  showing that the members can actually download   555 01:09:36,000 --> 01:09:44,480 the software your specimen has to show all of  the required criteria the examining attorney   556 01:09:44,480 --> 01:09:50,400 cannot add evidence to the file so even if  they were to go on a website and be able   557 01:09:50,400 --> 01:09:55,760 to verify that it actually is downloadable  if on the face of that specimen um it's not   558 01:09:55,760 --> 01:10:01,840 clear that the software is downloadable they  would have to do a refusal in that situation 559 01:10:06,320 --> 01:10:12,480 okay another question we have please address uh  guidelines on the acceptability of the following   560 01:10:12,480 --> 01:10:16,960 advertising materials for services so again  we're in the we're in the world of services   561 01:10:17,680 --> 01:10:24,640 and advertising is acceptable uh type of specimen  for services and specifically they're looking at   562 01:10:24,640 --> 01:10:32,480 press releases invoices and contracts i'll start  with the easiest first invoices are acceptable uh   563 01:10:33,040 --> 01:10:38,400 specimens for services assuming it displays  the mark it associates the mark with the   564 01:10:38,400 --> 01:10:44,480 services and invoice can be acceptable um  press releases are a little bit it depends   565 01:10:46,000 --> 01:10:53,280 if they're publicly available on the applicant's  website they can be acceptable again they have to   566 01:10:53,280 --> 01:11:02,720 display the mark and associate the mark  with the services um contracts i'm not sure   567 01:11:02,720 --> 01:11:08,880 i think hunt and i'll give you a team ap site  in a second contracts probably would be okay 568 01:11:11,360 --> 01:11:16,320 again if it displays the mark references the  services and makes an association between the two   569 01:11:17,040 --> 01:11:27,440 um there's uh a tmep section that kind of  goes into this a little bit it's 1301.04 so   570 01:11:27,440 --> 01:11:31,440 take a look at that and see if that  elucidates things a little bit further   571 01:11:33,120 --> 01:11:42,640 okay so what about when a seller is selling a  service through a third-party site like etsy   572 01:11:44,080 --> 01:11:50,240 not quite sure what you mean by selling a service  i think maybe you meant to say selling a product   573 01:11:51,040 --> 01:11:56,320 these sites don't always allow the seller to put  their mark in large prints or to change the font   574 01:11:56,320 --> 01:12:05,200 can a specimen of the third party's website be  a proper specimen if not how can the mark owner   575 01:12:05,200 --> 01:12:10,880 provide a good specimen so let's deal with  the first question there yes you certainly   576 01:12:10,880 --> 01:12:19,920 can provide us a point of sale display using a  third-party website websites like amazon etsy um   577 01:12:21,600 --> 01:12:29,440 uh shopify all of those as long as you are using  the mark in a trademark manner as long as it is   578 01:12:29,440 --> 01:12:37,120 functioning as a source identifying mark then yes  there you certainly can the mere fact that it's   579 01:12:37,120 --> 01:12:46,320 on a third-party website does not uh discount it  from being an online display electronic display um   580 01:12:46,960 --> 01:12:54,480 now uh if you know if on the other hand you're  using it in a manner and this happens sometimes   581 01:12:54,480 --> 01:12:58,720 where the mark is used in a way where  it doesn't really stand out very much   582 01:12:58,720 --> 01:13:05,360 it's not perceived by a mark there's a possibility  you might get a failure to function refusal but   583 01:13:05,360 --> 01:13:11,040 again it doesn't take much um it really doesn't so  you don't have to we don't require that there be   584 01:13:11,920 --> 01:13:17,600 a particular type of font or particular  size of font we're really more concerned   585 01:13:17,600 --> 01:13:24,960 with how would this mark be perceived by a a  typical consumer for this particular product   586 01:13:26,880 --> 01:13:35,200 okay okay we have a couple more questions  a two-parter the first one is how can one   587 01:13:35,200 --> 01:13:40,640 successfully submit this is from a gamer uh  how can one sub successfully submit specimens   588 01:13:40,640 --> 01:13:45,840 for an in-app purchase of virtual goods  in a downloadable game or virtual world   589 01:13:46,800 --> 01:13:53,280 i'm not a big gamer so i'm not sure how it works  but again i would go back to the general rules on   590 01:13:54,000 --> 01:14:00,320 uh electronic displays if i'm sure what  the difficulty here is going to be is   591 01:14:00,320 --> 01:14:06,560 showing the means to purchase there  has to be some click or action the   592 01:14:08,160 --> 01:14:14,480 player has to take to purchase the goods um as  long as that's clear from the specimen it could be   593 01:14:15,120 --> 01:14:19,040 an acceptable specimen then the  second part of the question is   594 01:14:19,040 --> 01:14:23,600 do the requirements for software specimens reply  apply to apps and the answer that question is   595 01:14:23,600 --> 01:14:29,040 absolutely yes apps are just the type of  software and they're also um software is a   596 01:14:29,040 --> 01:14:34,960 good generally speaking in other words there's  something you download to your phone or ipad um   597 01:14:36,080 --> 01:14:43,360 okay all right here we have another question are  slide decks or pitch decks acceptable specimens   598 01:14:44,000 --> 01:14:51,760 does it matter if it is a pdf or screenshot of the  powerpoint what if it is used to gain investors   599 01:14:51,760 --> 01:14:58,400 okay so there's three questions there um the first  thing is that um pitch decks it depends on what   600 01:14:58,400 --> 01:15:05,120 their the the mark is showing if it is uh for  goods it's probably not going to work because   601 01:15:05,120 --> 01:15:12,640 the pitch deck sort of in in essence is um is  promotional material and as you know promotional   602 01:15:12,640 --> 01:15:17,920 material is not acceptable for goods if you're  talking about services it depends again on the   603 01:15:17,920 --> 01:15:27,440 nature of the services there are certainly times  when um a slide that can be shown to be promoting   604 01:15:27,440 --> 01:15:34,720 the services to consumers this is a situation  where you definitely want to explain how that   605 01:15:34,720 --> 01:15:41,840 pitch deck is used in commerce if it is only  used to gain investors that is a situation where 606 01:15:44,480 --> 01:15:51,120 unless the services have something to do with  gaining investors from third parties probably   607 01:15:51,120 --> 01:15:57,120 that's not going to be seen as used in commerce  if it actually you know if a company is using   608 01:15:57,120 --> 01:16:04,640 a pitch deck to get funding for itself um that in  and of itself is not a service for the benefit of   609 01:16:04,640 --> 01:16:11,440 others so i would be careful with those types  of specimens as far as pdfs or screenshot of the   610 01:16:11,440 --> 01:16:19,280 powerpoint i'm going to have to tell you that i i  deal with this side of the business so i'm not 100   611 01:16:19,280 --> 01:16:26,000 sure if we accept pdfs at this point  i think we do but um i know we take   612 01:16:26,000 --> 01:16:33,680 jpegs and so um if you want to be for sure safe  that your specimen is going to be viewable it's   613 01:16:33,680 --> 01:16:40,720 probably a good idea to send it in jpeg form i  would suggest if you following up on that question   614 01:16:41,440 --> 01:16:52,560 with a technical question to the technical folks  i believe it is uh help uspto.gov but i'm not 100   615 01:16:52,560 --> 01:16:57,840 sure look on our website and find out where to  get technical assistance and they can certainly   616 01:16:57,840 --> 01:17:04,640 um uh give you some guidance um as  to the format of your slide deck okay   617 01:17:07,520 --> 01:17:12,880 okay this is kind of a long question but it's  basically about the curb karma example and there   618 01:17:12,880 --> 01:17:19,680 was some confusion as to when an app is doing  the work versus and providing a service versus   619 01:17:19,680 --> 01:17:29,520 when it's not um the way i think about this is if  the app is performing a service activity if the   620 01:17:29,520 --> 01:17:35,520 service activity is taking place in the app  or by the app then it's providing a service   621 01:17:35,520 --> 01:17:40,800 it doesn't mean that silly that you don't also  have a good specimen for a downloadable app you   622 01:17:40,800 --> 01:17:47,360 might have that as well but you might also have  a service being provided through that app if if   623 01:17:47,360 --> 01:17:53,920 the activities are taking place in  the software um rather than um the   624 01:17:54,960 --> 01:18:03,760 user or consumer having to do things uh to uh  perform the activity that's listed as the service   625 01:18:04,480 --> 01:18:09,920 that's kind of the distinction there i i'm sure  there's gray areas in between where it's harder   626 01:18:09,920 --> 01:18:15,040 to distinguish between the two but that's the  distinction we generally make between when it's   627 01:18:15,920 --> 01:18:18,880 software versus services provided via software 628 01:18:21,360 --> 01:18:27,200 all right now now that there are specific  fields on the form web page for the webpage   629 01:18:27,200 --> 01:18:33,840 url and access date do we still have to  also put that information on the screen   630 01:18:33,840 --> 01:18:39,840 capture the answer that is no as long as that  information is somewhere in the application   631 01:18:40,880 --> 01:18:48,320 we will we will have what we need so there  are as mark sort of explained earlier   632 01:18:48,320 --> 01:18:53,840 there are numerous ways of giving that  information to us in your application 633 01:18:57,200 --> 01:19:02,080 okay how about specimens that are already  of record can they be submitted as   634 01:19:02,080 --> 01:19:06,160 for your maintenance filings for example  can a specimen downloaded from tso   635 01:19:06,160 --> 01:19:11,680 dr be used to show use in commerce again  we're showing current use in commerce if that   636 01:19:11,680 --> 01:19:20,480 represents current use in commerce that may be  acceptable but it's a better practice to show um   637 01:19:21,680 --> 01:19:29,120 the uh specimen that's contemporaneous with  the uh uh filing of the maintenance filing 638 01:19:32,320 --> 01:19:40,880 okay is there a standing prohibition on photos  with solid white or black backgrounds as specimens   639 01:19:40,880 --> 01:19:49,280 of goods many e-commerce sites use a solid  background and applicants may have high quality   640 01:19:49,280 --> 01:19:56,000 photos with such backgrounds yet i have never had  an examiner except one with the white background   641 01:19:56,960 --> 01:20:00,080 okay so i need to think about this  question a little bit because i'm   642 01:20:00,080 --> 01:20:08,320 not quite sure the fact scenario so first  of all there's no standing prohibition   643 01:20:09,600 --> 01:20:19,680 regarding backgrounds what may be happening is  that there is an issue where maybe there's some   644 01:20:19,680 --> 01:20:27,280 kind of matching issue going on with the mark in  the specimen or perhaps what's being submitted   645 01:20:27,280 --> 01:20:36,160 looks like it is a digitally created specimen  um you know if you've got high quality photos   646 01:20:36,160 --> 01:20:41,840 um you know if if you're having trouble with a  black or white background it may be a situation   647 01:20:41,840 --> 01:20:48,000 where you might want to crop out all the extra  material and just submit the part that constitutes   648 01:20:48,000 --> 01:20:54,400 the photo of the um oh i'm assuming of the goods  themselves but would also work for services   649 01:20:56,000 --> 01:21:00,720 but that's that's the best i can do with that  question right now i'm not a hundred percent sure   650 01:21:00,720 --> 01:21:06,720 the fact scenario that you're referencing can  i jump in here i they might be talking about   651 01:21:06,720 --> 01:21:13,360 these retouched images that we get sometimes as  specimens and um they're taken from a website   652 01:21:13,360 --> 01:21:20,800 or something so they've been you know doc not  doctored but they've been processed to look very   653 01:21:20,800 --> 01:21:27,040 good and that there's no prohibition against that  but if you're worried about drawing a refusal in   654 01:21:27,040 --> 01:21:32,320 those situations rather than just providing  this the photograph or the touch retouched   655 01:21:32,320 --> 01:21:37,280 image or the image on the white background why  not provide the whole point of sale display   656 01:21:37,920 --> 01:21:48,000 um that way the examining attorney is more likely  to see that as an acceptable specimen um another   657 01:21:48,000 --> 01:21:52,400 question i have a follow-up question the post  registration website and specimen question are you   658 01:21:52,400 --> 01:22:00,160 saying that we have to wait until the statutory  period opens to obtain a specimen from our client   659 01:22:00,160 --> 01:22:04,400 we can't use the specimen created a week or  two or but before the statutory period opens 660 01:22:06,480 --> 01:22:13,600 if it's representing what is going on when during  the statutory period it could be acceptable but i   661 01:22:13,600 --> 01:22:20,320 mean it's always better to show to not raise the  question in the examiner's mind as to whether   662 01:22:20,320 --> 01:22:29,520 that is showing current use or not okay all  right so um we've got a really good question   663 01:22:29,520 --> 01:22:36,000 here an applicant was unable to use a mark for  advertising services during trade shows in 2020   664 01:22:36,000 --> 01:22:42,240 because of covid however the applicant was able to  use the trademark in the context of virtual trade   665 01:22:42,240 --> 01:22:49,120 shows with potential clients via zoom teams  or other means is the use of the trademark   666 01:22:49,120 --> 01:22:56,160 in the powerpoint presentations or videos  used during the virtual trade shows acceptable   667 01:22:56,160 --> 01:23:03,920 i would say most likely yes they are but again um  if you simply give a powerpoint presentation with   668 01:23:03,920 --> 01:23:10,880 no additional explanation as to how that  powerpoint was used the examining attorney   669 01:23:11,520 --> 01:23:17,440 isn't isn't going to have that background to  make a good decision there but do you give   670 01:23:17,440 --> 01:23:22,720 us that background information so that we can  make a proper determination in that situation   671 01:23:23,920 --> 01:23:29,600 all right and here's another one if you have a  good specimen for goods but the image is small   672 01:23:29,600 --> 01:23:38,080 can you submit an additional close-up that uses a  magnification tool um sure you can absolutely um   673 01:23:38,880 --> 01:23:42,400 that i we understand that there  are times there are limits to   674 01:23:42,400 --> 01:23:49,760 how much you can improve the quality of an image  in a specimen and so if you give us specimen you   675 01:23:49,760 --> 01:23:56,640 can certainly give us a second page that enlarges  the image and it but again give us an explanation   676 01:23:56,640 --> 01:24:02,800 as to what that second page is so that the  examining attorney will be able to properly   677 01:24:04,080 --> 01:24:09,840 analyze what that particular specimen is and won't  think of it well those are just two bad specimens 678 01:24:13,360 --> 01:24:17,840 okay i got kind of the same question again  so i must not have answered it very well um   679 01:24:18,480 --> 01:24:23,840 can specimens that are already in the record be  submitted for maintenance filings for example can   680 01:24:23,840 --> 01:24:29,760 a specimen downloaded from tsdr be used to show  using commerce i would say you shouldn't do that i   681 01:24:29,760 --> 01:24:35,680 mean does that show current use again this is what  we're looking for current use meaning use in the   682 01:24:35,680 --> 01:24:43,840 statutory period it's likely not representative  of that use and wouldn't be acceptable   683 01:24:45,840 --> 01:24:51,760 okay so if you file a specimen and  it is rejected is there any way to   684 01:24:51,760 --> 01:24:57,840 change your application to an itu after the  specimen rejection or is the only thing to do   685 01:24:58,560 --> 01:25:05,040 is file a new application itu um you will all  if okay so i'm going to answer that question   686 01:25:05,040 --> 01:25:13,760 by saying it depends on whether you are where you  are at the point of that refusal so let's assume   687 01:25:13,760 --> 01:25:20,720 that you are prior to the mark being  published and you filed you filed 1a   688 01:25:22,480 --> 01:25:30,240 if you do that then you can always prior to prior  to publication amend the filing basis to 1b and   689 01:25:30,240 --> 01:25:37,120 then give us a specimen after the mark is actually  in use if on the other hand the issue comes up   690 01:25:37,840 --> 01:25:45,440 after an sou the answer there is it depends  if your sou is in the first six months   691 01:25:46,320 --> 01:25:51,200 of the filing period and you have  filed what we call an insurance   692 01:25:52,640 --> 01:25:59,920 extension um you would be able to move forward  you would not be able to change it to 1b but   693 01:25:59,920 --> 01:26:08,560 you'd be able to move forward your use dates um  at the same time if it's at the sou period and you   694 01:26:08,560 --> 01:26:14,880 haven't filed your sou yet you get your notice of  allowance you can simply file an extension of time   695 01:26:15,520 --> 01:26:23,200 um if you're not sure it's always better to to to  file either an extension or an insurance extension   696 01:26:23,840 --> 01:26:28,640 with your filing of your sou just in case you  run into problems with your specimen like this   697 01:26:28,640 --> 01:26:34,320 because on the back end once it's been published  there is no going back to itu but on the front end   698 01:26:34,320 --> 01:26:40,800 if it's prior to publication yes you can amend  to one b hopefully that answers your question 699 01:26:43,360 --> 01:26:49,920 got a question about apparel and footwear is it  necessary for ticketing to be attached to the   700 01:26:49,920 --> 01:26:55,360 product without visiting a retail store this can  be difficult to produce in the past photographs   701 01:26:55,360 --> 01:27:00,560 of ticketing itself have been accepted but it's  my understanding they aren't accepted anymore   702 01:27:02,320 --> 01:27:07,120 i think by ticketing we're talking about  tags and things like that and like renee   703 01:27:07,120 --> 01:27:12,480 was explaining during her presentation uh  if it's attached to the goods that's great   704 01:27:13,120 --> 01:27:20,320 but if it's unattached uh we can't accept  it if there's that information indicating   705 01:27:20,320 --> 01:27:27,120 that it's an actual tag used in in commerce so  information about the goods pricing upc codes 706 01:27:29,680 --> 01:27:33,360 size size thank you things like that 707 01:27:35,520 --> 01:27:41,040 yeah so if that kind of information is on  the tag we can accept it apart from the   708 01:27:42,000 --> 01:27:45,840 from being a fix to the goods 709 01:27:48,640 --> 01:27:52,480 all right so mark you're up again  they're asking about the statutory period   710 01:27:53,440 --> 01:27:59,840 does the statutory period for use  include use during the grace period yes   711 01:28:00,480 --> 01:28:04,560 so you can file during the grace period  and show use during the grace period yes   712 01:28:05,600 --> 01:28:15,760 it's always good when there's a yes or no  answer okay do we have any more questions 713 01:28:18,240 --> 01:28:24,800 you all asked very very good questions i  i i think this is a very uh experienced   714 01:28:24,800 --> 01:28:32,560 group of uh practitioners tough questions  no questions no more questions all right 715 01:28:35,040 --> 01:28:38,000 go ahead looks like something  might be coming out coming in   716 01:28:38,800 --> 01:28:43,600 oh oh yeah yeah we were we were about to get  you out of here we'll give you back a half an   717 01:28:43,600 --> 01:28:47,840 hour but it looks like we've got  a maybe a few questions coming in 718 01:28:53,680 --> 01:28:59,360 okay um one last one for me can you please touch  briefly on the requirements relating to specimen   719 01:29:00,000 --> 01:29:08,800 audits please so there's a lot in there but  specimens for audits are going to be generally   720 01:29:08,800 --> 01:29:15,520 the same as regular specimens except they're  going to have to show use with the specific   721 01:29:15,520 --> 01:29:22,160 good or service audited so there has to be if it's  not affixed to the particular good or service and   722 01:29:22,160 --> 01:29:29,600 it's not clear that it's socks for example um the  tag or whatever should be labeled as socks so we   723 01:29:29,600 --> 01:29:37,840 know exactly that this specimen is associated with  socks and not some other article of clothing um 724 01:29:40,080 --> 01:29:44,160 and that's kind of the difference  between special we need to know that   725 01:29:44,160 --> 01:29:51,840 exact relationship between that exact good  or service and that proof of use especially 726 01:29:54,640 --> 01:30:04,480 okay well it looks like if we don't have any more  questions looks like we've come to the end of our   727 01:30:05,360 --> 01:30:11,360 discussion today we certainly hope  that you got something out of today and   728 01:30:12,160 --> 01:30:18,640 will be able to use some of the information in  your practice mark did you want to add anything   729 01:30:18,640 --> 01:30:26,560 at the anything is closing um no i just i'm very  happy with the turnout and i'm glad everybody   730 01:30:26,560 --> 01:30:32,080 was able to attend i hope like Renee said that i  know there's probably things in here that people   731 01:30:32,080 --> 01:30:36,240 already knew but hopefully there is something  in here that you know turned on a light bulb or 732 01:30:39,120 --> 01:30:44,560 enabled you to learn something new today so thanks  a lot for coming thank you very much we're going   733 01:30:44,560 --> 01:30:51,360 to turn you over to um Tasha now thank you mark  and Renee and thank you all for attending our   734 01:30:51,360 --> 01:30:56,720 presentation today um although we didn't get to  all of the questions that we had we will certainly   735 01:30:56,720 --> 01:31:02,640 use the questions and the feedback received from  today to determine how we can update or expand our   736 01:31:02,640 --> 01:31:08,960 resources on and information on specimens in a few  minutes you will receive an email with a survey we   737 01:31:08,960 --> 01:31:14,160 hope that you will complete the survey to let us  know how we did today and provide suggestions for   738 01:31:14,160 --> 01:31:18,800 future webinar topics for those viewing the  recorded version of this webinar please feel   739 01:31:18,800 --> 01:31:27,360 free to email your feedback and suggestions to  tm underscore webinar at uspto.gov we are also   740 01:31:27,360 --> 01:31:32,560 continuing to collect feedback on implementation  of the trademark modernization act if you are   741 01:31:32,560 --> 01:31:37,520 familiar with the trademark modernization act or  if you would like to know more there's a webpage   742 01:31:37,520 --> 01:31:43,120 on a page on our website with more information  if you have comments please send your written   743 01:31:43,120 --> 01:31:53,760 comments to tm feedback uspto.gov thank  you all and have a great rest of your day!