Comments submitted by IPO on 7/16/2014: Intellectual Property Owners Association (IPO) thanks the United States Patent and Trademark Office (PTO) for the opportunity to provide input regarding the Draft Examination Guide for Service Mark Specimens (“Draft Guide”). We agree in large part with the Draft Guide, but have concerns that some of the language that addresses marks associated with both goods and services may result ...more »
Comments submitted by IPO on 7/16/2014:
Intellectual Property Owners Association (IPO) thanks the United States Patent and Trademark Office (PTO) for the opportunity to provide input regarding the Draft Examination Guide for Service Mark Specimens (“Draft Guide”). We agree in large part with the Draft Guide, but have concerns that some of the language that addresses marks associated with both goods and services may result in improper specimen refusals as pertains the services association. We also suggest that it may be premature to state categorically that registration must be refused when a specimen shows use of a term
“solely” as the name of computer software programs and applications. Finally, the direction that a specimen must be studied to determine whether the applicant is performing the services or the underlying software allows users to perform the services, provides insufficient guidance and may lead to arbitrary decisions on registrability and should be removed. Our specific comments follow.
The language in Section I.C. entitled “Other Specimen Considerations and Issues,” subsection entitled “Whether the Applied-for Mark is Used in Connection with the Identified Services,” states that a “registration must be refused if the specimen shows the mark is used to promote goods rather than the identified services.” This statement is unnecessarily restrictive considering goods and services may be promoted simultaneously and by the same mark. A mark should not be refused automatically because it is a source identifier for both goods and services. We suggest clarifying that a service mark specimen should not be refused merely because it is also a source identifier for related goods.
Section I.C. (final paragraph) provides that registration “must be refused” if the specimen shows the mark serves solely as the name of “a computer software program or application.” However, the Draft Guide lacks guidance to distinguish when a computer software program or application name is being used “solely” as a name and not as a service mark, but it is perhaps used for services such as “temporary use of online nondownloadable software.” In contrast to the guidance in the TMEP on determining when a mark is being used solely as a trade name (TMEP § 1202.01), solely as the name of a method, process or system (TMEP §1301.02(e), or solely in an informational or ornamental matter (TMEP 1301.02(a)), the guidance on the topic of computer software found at TMEP 1301.02(f) appears to need elaboration. This section cites two pre-Internet cases from 1982 and 1986, and two cases from 2006 and 2008 which even now are dated given the emergence of cloud-based computing. Section III.B. of the Draft Guide reiterates this proposed language (that registration must be refused for computer software programs and applications if used “solely” as the name of the product), but the
only example provided relates to trade name use. It does not offer any new or additional guidance on how to distinguish between use of the name of a computer software program or application “solely” as the name of the product versus as a service mark. We suggest “computer software program or application” be removed from the list of uses for which registration must be refused in Sections I.C. and III.B.
In Section II entitled “Elements of an Acceptable Service Mark Specimen,” the first sentence states “to be acceptable, a service mark specimen must show the mark sought to be registered used in a manner that demonstrates a direct association between the mark and the services.” This language may present a problem where services are closely integrated with goods as well. For example, the services complement the goods and would never be offered without the underlying goods. In this case, the mark may not show a direct association with the services absent the goods. We suggest clarifying that a direct association between a mark and services may exist even if goods are shown in the specimen and are an integral part of the provision of the services. In other words, the direct association need not always be depicted with services absent any related goods.
Section III entitled “Grounds for Refusal” subsection A entitled “Failure to Show the Mark Used in Commerce” states “if the mark does not appear on the specimen or the specimen shows use of the mark in connection with goods rather than the
identified services, the specimen must be refused for failure to show service mark use in commerce in connection with the identified service.” We suggest the Draft Guide clarify that if the mark is shown in connection with both goods and services that the specimen should not be automatically refused. While the specimen must show a use of the services in commerce, the specimen need not show use of the services excluding any use of related goods.
In Section IV.A. (third paragraph), the Draft Guide primary consideration in determining whether a specimen supports use of the mark for the identified services “is whether the specimen indicates that the applicant is actually performing the relevant service activities for others, or merely providing software that allows users of the software to perform those activities themselves.” Two examples are provided, the examples seem lacking in sufficient guidance to make such this determination. Whether the applicant “actually performs” the services versus “provides software that allows users of the software to perform those activities themselves” may be difficult to distinguish in real life, much more so in a specimen of use. For example, an online travel search engine “provides software that allows user of the software” to make airline reservations, but in reality, it is the underlying software that actually causes the tickets to be purchased. Would this mean that the online travel search provider should be denied registration for a service that allows users of the software to book travel, simply because the software itself actually completes the travel booking process? Similarly, should a tax e-filing online software program be refused registration for “tax preparation and filing services” since it is the users who actually input the data and “prepare” their own taxes using the software? In both instances, it seems that it would be acceptable for the online travel search engine to be granted registration for both “travel reservation services” as well as for “providing temporary online non-downloadable software featuring travel reservation services” and for the e-filing service to be registered for “tax preparation and filing services” as well as for “providing temporary online nondownloadable software enabling the preparation and filing of taxes.” We suggest revising the statement in Section IV.A. to acknowledge that such a determination is not a black and white inquiry or omitting the sentence.
Finally, in Section IV entitled “Considerations and Common Issues when Examining a Specimen for Technology-Related Services” subsection C entitled “Common Forms of Specimens for Modern Technology-Related Services” further subsection 4 entitled “Webpages” we note the omission of the treatment of webpages with combined services and goods as well as the omission of how the Examiner should treat such webpages. Example 19 states “Mark-services association is present because it is customary to display service marks near the top of the webpages on which the services are advertised or through which they are accessed, rendered and experienced.” We question this assertion. If a webpage specimen offers goods and services in combination, the mark for the services may not appear at the top of the page or may not appear as prominently as the mark for the goods. The mark may appear at the top of the page referencing the goods and the reference to the services may appear in another location on the webpage. The mark may only be used as the heading of a section within a webpage that offers goods and services together. We recommend adding examples illustrating Examiner treatment of webpages with combined goods and services. That a mark or the reference to the services is not at the top of the webpage or does not appear as prominently as a mark for goods that may also be used on that webpage does not necessarily mean that the mark cannot still serve as a service mark and source indicator.
IPO appreciates that the public was given an opportunity to submit comments on the Draft Examination Guide for Service Mark Specimens. We look forward to working with the Office on forthcoming examination guides.
Herbert C. Wamsley