Listing too many goods or services on the application. If your program is a software as a service, a webapp, or otherwise has no. Ttab dismisses appeal from specimen refusal because. Specimen is described as web printout and appears to show. Protocol kickstarter providing online nondownloadable software for use in managing data and information in the field of medical clinical trials and research. Providing temporary use of nondownloadable computer software for. Dec 17, 2012 the board likened this case to online retailing cases in which a webpage specimen fails to provide a means for ordering the goods or services. To be acceptable for trademark registration purposes, a specimen must show the mark as used on or in connection with goods products sold in commerce that is regulated by congress, namely interstate, territorial, and commerce between the united states and a foreign country. Specimens of continued use are also required when maintaining or renewing a trademark registration. If the website simply advertises the software without providing a way to download it, the specimen is unacceptable. Sep 17, 2015 given that the required petition fee for amending the registration is less than the filing fee for an entirely new us trademark application, this pilot program could be of particular interest to us trademark owners in the software, media, cloud computing, social networking and mobile communications spaces. The manner of trademark use on a specimen must be such that potential customers would. Meeting the use in commerce requirement for a cloudbased. The uspto treats downloadable software as a class 9 good, and.
Class 42 is a service that allows software to be used for various purposes. Tips to selecting proper trademark classification in. Downloadable software for calculating the value of solar photovoltaic systems. This opinion is not a precedent of the ttab united states. The ttab did agree with the examining attorney that the specimen raised some.
For downloadable software, copies of the instruction manual and screen printouts from 1 web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, 2 the actual program that shows the mark in the title bar, or 3 launch screens that show the mark in an introductory. Tsdr help united states patent and trademark office. Providing online nondownloadable software for use in clinical trial protocol development in the nature of developing protocols for medical clinical trials and research. The specimen must show the mark as used on or in connection with the goods in commerce. Getting this wrong can be costly and timeconsuming. For cloudbased software or saas, specimens must show the uspto that the. What is the trademark classification for software to be. To expand on my colleagues response, class 9 covers retail and downloadable software, class 42 covers computer services including temporary use of nondownloadable. Ic 042 providing temporary use of online nondownloadable cloud computing software for specify. For services, a specimen shows the trademark as actually used in commerce with your existing services in a way that directly associates the trademark with the services. Ttab dismisses appeal from specimen refusal because applicant. How to register your software app name as a trademark nolo. Thus, the appearance of this term on a servicemark specimen does not, by itself, necessarily mean that the relevant services are not in actual use in commerce or that the.
Mar 19, 2018 the uspto treats downloadable software as a class 9 good, and nondownloadable software as a class 42 service, even though the two versions of the software may be functionally identical. A trademark specimen should be a label, tag, or container for the goods, or a. Two recent trademark decisions provide ammunition for. The board likened this case to online retailing cases in which a webpage specimen fails to provide a means for ordering the goods or services. If needed, dont hesitate to consult an expert such as a trademark attorney to ensure you register your trademark with the correct class. Substitute specimen is acceptable due to the following statements. Jan 15, 2020 the board dismissed this appeal from a refusal to register the mark finlistics clientiq for business development consulting services, namely, providing temporary use of nondownloadable software for analyzing, calculating, measuring, modeling, and forecasting business and financial performance, because applicant failed to address the ground for refusal. Classes like 9 and 42 are so similar, in fact, that class 9 includes downloadable software while class 42 includes nondownloadable software. Selection, trademark clearance, registration, licensing and infringement.
Broadening a us trademark application the usptos new. What is the difference between class 9 software and class 42. Some of its provisions are frustratingly restrictive for trademark owners, such as prohibitions against accepting advertising materials as specimens of use for marks for goods. Trademark class 42 is a trademark class used by the united states. Apr 19, 2019 requests registration of the trademark service mark identified above in the united states patent and trademark office on the principal register established by the act of july 5, 1946 15 u. Be sure that the services of the application have been properly identified. For apps, the best specimen is a screen capture of the app store.
What is the difference between class 9 software and class. For downloadable software, copies of the instruction manual and screen printouts from 1 web pages showing the mark in connection with ordering or purchasing. A specimen is a means of providing proof of your goods or services to the uspto. Mark is shown in large font at the top of the webpage and in the middle of the webpage. Oct 24, 2017 in an effort to educate our clients, heres a quick primer on what is acceptable to submit as a specimen for a trademark application for services. Uspto posts service marks specimens examination guide. In the past few years, many trademark practitioners have noticed an. For example, a specimen could be an advertisement, brochure, website printout or other promotional material which shows your trademark used for the services, business signs.
Jan 14, 2019 but because the hashtag is also the name of the software tool, popsugar has a better chance of getting it registered. The board dismissed this appeal from a refusal to register the mark finlistics clientiq for business development consulting services, namely, providing temporary use of nondownloadable. A specimen is an example of the trademark used in connection with the goods or services provided to the government. The following is a list of trademarks and service marks registered and owned by nikon corporation in the united states, and certain other countries. Apr 29, 2014 class 9 is a software product that can be made and sold separately from other products or services. Meeting the use in commerce requirement for a cloud. The trademark manual of examining procedure tmep is the official manual of the united states patent and trademark office governing how the office handles trademark applications. Goods or services providing online nondownloadable software featuring an online booking tool for use by travel agencies and their corporate customers to enable searching and administering travel procurement. Jan 14, 2011 to expand on my colleagues response, class 9 covers retail and downloadable software, class 42 covers computer services including temporary use of nondownloadable clientserver software, and class 38 covers a multipleuser access to a global computer network. Every registered trademark must have a specimen showing use of the trademark in commerce for the specifically claimed goods or services.
How to meet the commercial use requirement for an app. Trademark examining attorneys will be governed by the applicable statutes, the trademark rules of practice, decisions, and orders and notices issued by the under secretary of commerce for. Section 1051a, the applicant is the owner of the trademark service mark sought to be registered. Two recent trademark decisions provide ammunition for trademark owners who receive improper specimen refusals for service marks. Acceptable trademark specimens griggs bergen llp, trademark.
The board dismissed this appeal from a refusal to register the mark finlistics clientiq for business development consulting services, namely, providing temporary use of nondownloadable software for analyzing, calculating, measuring, modeling, and forecasting business and financial performance, because applicant failed to address the ground for refusal. For apps, the best specimen is a screen capture of the app store listing clearly showing the mark. Specimen description excerpts from seminar presentation regarding litigation support services attorney information name patricia l. Annual report on global specimen solutionss revenue, growth. This attachment is usually required for a section 1a usebased trademark application.
For example, a beta version of nondownloadable or downloadable software may be made available to the public for use even though the final version has not been released. Data management services for use in debt collection, namely, electronic data collection and online claims management. To be acceptable for trademark registration purposes, a specimen must show the mark as used on or in connection with goods products sold in. Class 42 is a service that allows software to be used for various purposeswith the software tied into the service provider such as a website. Oct 26, 2016 software is content or fieldspecific, the field of use this does not include providing online computer games that are played online ic 042 computer software design and development ic 041 nondownloadable publications and game software ic 038 transmission of sound, video and information from web cams, video cameras or mobile phones. Annual report on global specimen solutionss revenue. Trademark class 42 is a trademark class used by the united states patent and trademark office uspto. Proving commercial use of a cloudbased software platform, web app, saas, or other nondownloadable program that exists solely in the cloud can be tricky. If your application is a downloadable app as opposed to a nondownloadable. Keep in mind that specimens for goods differ from specimens for services. The trademark manual of examining procedure tmep is the official manual of the united states patent and trademark office governing how the office handles trademark. Nov 24, 2017 the trademark manual of examining procedure tmep is the official manual of the united states patent and trademark office governing how the office handles trademark applications and. Jan 16, 2020 the board dismissed this appeal from a refusal to register the mark finlistics clientiq for business development consulting services, namely, providing temporary use of nondownloadable software for analyzing, calculating, measuring, modeling, and forecasting business and financial performance, because applicant failed to address the ground for refusal.
This opinion is not a precedent of the ttab hearing. A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods. Uspto posts service marks specimens examination guide lexology. The trademark manual of examining procedure tmep is the official manual of the united states patent and trademark office governing how the office handles trademark applications and registrations. Providing temporary use of online nondownloadable software. Trademark examining attorneys will be governed by the applicable statutes, the trademark rules of practice, decisions, and orders and notices issued by the under secretary of commerce for intellectual property and director of the united states patent and trademark office, commissioners, or deputy commissioners. This webpage explains the requirement for a specimen of your trademark in certain applications, provides examples of acceptable specimens, explains certain common specimen refusals and how to overcome them, and provides instructions on how to submit a response to certain specimen refusals using the trademark electronic application system teas. A photocopy or other reproduction of a specimen of the mark as actually used on or in connection with the goods is acceptable. Providing temporary use of online nondownloadable software for digitizing, enhancing, manipulating, editing, printing, storing, indexing and transmitting images, for ordering of photographic prints and albums over global computer networks, and for ordering and central storage of online photograph albums. Specimen is described as web printout and appears to show the mark used in rendering the services.
Providing temporary use of nondownloadable computer software for retirement planning, in class 42. How to meet the commercial use requirement for an app trademark. Ultius provides a web based marketplace for connecting consumers and freelance writers for highquality content. Classes like 9 and 42 are so similar, in fact, that class 9 includes downloadable software while class 42 includes nondownloadable. Foreword trademark manual of examining procedure tmep. Trademarkservice mark application, principal register. Computer software for calculating the value of solar photovoltaic systems. Uspto tsdr case viewer united states patent and trademark. Since class 42 consists of scientific and technological services rather than goods, you need to submit proof of your services on which the trademark is clearly visible. Software as a service saas services featuring software for transactions using virtual currency, namely, software for managing, buying, selling, storing, transacting, exchanging, sending and receiving virtual currency. Opposer attached a printout from the usptos 1 application serial no. What is the trademark classification for software to be used. United states patent and t o this opinion is not a trademark.
Oct 31, 2014 uspto posts service marks specimens examination guide. The uspto treats downloadable software as a class 9 good, and nondownloadable software as a class 42 service, even though the two versions of the software. The specimen should show the trademark as it is claimed and used in the trademark application. Providing temporary use of nondownloadable computer software for use in accessing, reading, tracking. Class 9 is a software product that can be made and sold separately from other products or services. Specifics on service specimens meeting trademark hurdles. Patent and trademark office posted its final version of examination guide 314 on the topic of service mark specimens. There are several different ways an applicant can show a specimen for an app. In an effort to educate our clients, heres a quick primer on what is acceptable to submit as a specimen for a trademark application for services. The uspto treats downloadable software as a class 9 good, and nondownloadable. The uspto has imposed various rules and guidelines on what constitutes an acceptable specimen of use. Providing online nondownloadable computer software for use as a cryptocurrency wallet. This sample proves that the company is using the claimed mark in connection and association with its company activities products or services.