CHONUT Sandwich Specimen is Delicious...But Will Be Rejected

On May 30th, an individual in New Jersey filed a federal trademark application for CHONUT. The applicant filed the application on a 1(a) basis in Class 030 for "[h]amburger sandwiches." According to the application, he has been using the term since February 2015.

All is good so far, until the applicant's specimen is examined (see above). While this may be a literal "specimen" of the sandwich, this is not the specimen the Trademark Office needs to register a trademark.

A specimen, for Trademark Office purposes, shows the manner in which a mark is seen by the public. TMEP 904. For goods, labels and tags, stampings, and commercial packaging showing the mark are all acceptable specimens. See TMEP 904.03(a)-(c). Websites can also be good specimens so long as the identified goods are displayed in close conjunction with the mark and there is a means for ordering the goods. TMEP 904.03(i).

Unfortunately for this applicant, his "specimen" shows the goods, not the mark. Fortunately for the applicant, the Trademark Office will give him an opportunity to fix the deficient specimen. To save his application (and filing fee), the applicant will need to submit a substitute specimen that shows the mark being used in commerce in conjunction with the goods. The substitute specimen must also have been in use in commerce at least as early as the filing date (in other words, he can't create a new specimen now).

On another note - the specimen was described as a "barbecue sandwich on a donut." Would that be good?

THE REDNECK GOLF CLUB Is Apparently in Florida

On September 18th, The Bluff's Golf Course, Inc. filed a federal trademark application for THE REDNECK GOLF CLUB as it relates to "[g]olf club services[.]" This golf course, located in Zolfo Springs, Florida, is attempting to solidify itself as "The Redneck Golf Club" by securing a nationwide monopoly over the term through this application. The course claims it has been using the term since July 2013.

Unfortunately, I see some issues with the specimen submitted. The specimen, seen below purports to show the mark as used on the course's Facebook page. The term is found in quotes in one post on the page. This is problematic.

An acceptable specimen for a servicemark (not a trademark for goods) is a specimen that (1) shows the mark and (2) demonstrates a direct association between the mark and services. TMEP 1301.04(f). 

When submitting websites as specimens, it is important that the mark be prominently displayed, usually in larger letters, and the services listed in the application are clearly listed on the website near or in conjunction with the mark. TMEP 1301.04(i) shows some examples of acceptable website specimens for services.

The specimen submitted by The Bluff's Golf Course only shows the mark used once in small font. The Trademark Offices likes to see trademarks that stand out, are found in large letters, and are found in places you would normally see a brand name on a webpage (at the top left, front and center, etc.). If this specimen was for THE BLUFFS GOLF COURSE, it would have a better chance of being acceptable.

Additionally, the Facebook page does not make clear references to the golf services provided under the mark. It can be inferred from the page, but a better specimen would show various prices, available tee times, and information regarding the course.

In sum, The Bluff's Golf Course may need to overcome this hurdle and show acceptable trademark use of THE REDNECK GOLF CLUB before it can truly claim to be "The Redneck Golf Club" of America. Does it really want that title though?

Delicious SPAGHETTI MEATBALLWICH Trademark Filed

On September 6th, a restaurant in Tarzana, California filed a federal trademark application for the term SPAGHETTI MEATBALLWICH as it relates to "[s]andwiches; Sandwiches, namely, Meatball; Spaghetti and meatballs."

The applicant's specimen of use, shown above, is a screenshot of the sandwich on its website. Although website screenshots are not always acceptable specimens, this one should work.

According to Section 904.03(i) of the Trademark Manual of Examining Procedure, "a webpage can constitute a 'display associated with the goods' [which is an acceptable specimen] if it:

(1) contains a picture or textual description of the identified goods;

(2) shows the mark in association with the goods; and

(3) provides a means for ordering the identified goods."

As you can see on the specimen above, the webpage certainly shows a pictorial description of the sandwich, the trademark is in large letters right above the picture, and in the top right corner there is the ability to order online. If the webpage did not contain one of these elements, such as the ability to order the sandwich, it may not have been an acceptable a specimen.

If the applicant is successful in obtaining this registration, they will become the only restaurant that can name a sandwich the "Spaghetti Meatballwich."

Today's Trademark Tip - Your Specimen Should Show Your Trademark In Commerce

On August 18th an individual submitted the specimen below in conjunction with a trademark application for "cookies."

This specimen, however, is a "computer graphic that merely illustrates what the mark looks like..." and thus is not sufficient. A better specimen is a picture of this logo on the actual packaging for the cookies.

Too often I see trademark applications filed with a specimen that does not actually show the mark as it is used in commerce.

To provide some background, there are two instances where the trademark will show up on an application (assuming it is based on previous use): as the "drawing" in the "Mark Information" section and attached as a "specimen" in the "Filing Basis" section.

The drawing "shows the mark sought to be registered" and "is used to reproduce the mark in the Trademark Official Gazette and on the registration certificate." TMEP 807. For a word mark, the Trademark Office will generate the trademark in all capital, standard text letters as the drawing. The drawing for a logo mark should be a clear logo showing only the mark to be registered.

A specimen, on the other hand, "show[s] the manner in which the mark is seen by the public." TMEP 904. In general, a specimen for goods should show use of the mark in commerce on or in connection with the goods listed in the application. For goods, an appropriate trademark specimen "should be a label, tag, or container for the goods, or a display associated with the goods." TMEP 904.03. 

An inappropriate specimen is "a 'picture' of the mark, such as an artist’s drawing, a printer’s proof, a computer graphic that merely illustrates what the mark looks like, or an image of the goods that has been digitally created or altered to include the mark" because these items do not show actual use of the mark in commerce. TMEP 904.04(a).

Not submitting an appropriate specimen will result in the Trademark Office issuing an office action asking the applicant to submit a substitute specimen. However, the substitute must be a "verified substitute specimen," meaning it was being used on the goods at least as early as the first use date listed. If the applicant does not have a suitable specimen that fits this criteria, the application can be amended to an intent-to-use application (something anything else risks committing fraud on the Trademark Office).

The bottom line - make sure the specimen submitted with your trademark application depicts how your customers will actually see your trademark in commerce.