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. The examining attorney refused registration on the ground. Providing temporary use of nondownloadable computer software for use in the creation and. Selection, trademark clearance, registration, licensing and infringement. If your program is a software as a service, a webapp, or otherwise has no. And for softwareyour company doesnt provide a disk anymorebut it is available for download. 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.
There are several different ways an applicant can show a specimen for an app. Rapid global business solutions, inc office action ttab. The specimen must show the mark as used on or in connection with the goods in commerce. In the past few years, many trademark practitioners have noticed an increase in the number of rejections for trademark specimens the documents. The absence of any trademark, service mark, name, product. To expand on my colleagues response, class 9 covers retail and downloadable software, class 42 covers computer services including temporary use of nondownloadable clientserver. Patent and trademark office posted its final version of examination guide 314 on the topic of service mark specimens. When it comes to proper specimens, there is no single perfect example of a specimen.
Culhane meadows pllc update trademark registrations to. Telecommunications services, namely, providing online and telecommunication facilities for realtime interaction between and among users of computers, mobile and handheld computers, and wired and. The following is a list of trademarks and service marks registered and owned by nikon corporation in the united states, and certain other countries. Trademark search for an app or name of a software program. Opposer attached a printout from the usptos 1 application serial no. Specimen is described as web printout and appears to show the mark used in rendering the services.
Us12961,590 20101207 20101207 systems, methods, and computer program products for user authentication active 20311020 us8504831b2 en priority applications 1 application number. The program goes by the catchy name pilot program to allow amendments to identifications of goods and services in trademark registrations due to technology evolution. If the applicant is filing the application based on use in commerce under 15 u. Hacking and or fraud is no longer an if but a fact, no longer an if but a when. The manner of trademark use on a specimen must be such that potential customers would. What is the difference between class 9 software and class 42. Telecommunications services, namely, providing online and telecommunication facilities for realtime interaction between and among users of computers, mobile and handheld computers, and wired and wireless communication devices. Subtweet trademark serial number 86805466 justia trademarks. Applicant is using servicemarktrademark in conjunction with providing software for recruiting management outsourcing and for managing the entire staffing process from requisition to payment, including providing. Patents available for public use in patent and trademark resource.
Viners trademark serial number 86698787 justia trademarks. A specimen is an example of the trademark used in connection with the goods or. In addition, the examining attorney argues that the specimen is unacceptable because it fails to indi. For computer software, a cd jacket, a cd label, a screenshot of the software or a web page with download order instructions showing the trademark. Apr 27, 2015 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. In another embodiment, the social network creates indexes of information, sites, andor other resources available on computer networks, provides temporary use of nondownloadable software applications for social networking, creates a virtual community, andor facilitates the transmission of audio, video, photographic images, text, graphics, and. It is not necessary that purchasers see the mark prior to purchasing the goods. 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. 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.
Intellectual property office of the philippines trademark e. In the case of trademark search for any type of software be it an app or saas, you should search in both classes. The examining attorney refused registration on the ground that the specimen failed to show the mark used in direct connection with the identified goods audio recordings. Specimen is described as web printout and appears to show the mark used in. Dec 30, 2015 and for softwareyour company doesnt provide a disk anymorebut it is available for download. A trademark specimen should be a label, tag, or container for the goods, or a display associated with the. Providing temporary use of nondownloadable computer software for personalized, interactive television tv programming and for use in generating, displaying and manipulating visual media, graphic images, photographs, illustrations, digital animation, video clips, film footage and audio data, and for social networking. If you have trademark registrations for technologies that are now outdated, you may be eligible to participate in a new us trademark office program to update your registrations. A trademark specimen is a sample of how the company and the trademark holder use the mark. 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.
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. Uspto posts service marks specimens examination guide. The united states patent and trademark office accepts different formats into evidence. Providing a website featuring nondownloadable software to enable uploading, creating, posting, editing, showing, displaying, blogging, sharing and transmitting of electronic media, videos, or information. Acceptable trademark specimens griggs bergen llp, trademark. Update trademark registrations to reflect new technology. Providing temporary use of nondownloadable software applications for classifieds, virtual community, social networking, photo sharing, and transmission of photographic. In another embodiment, the social network creates indexes of information, sites, andor other resources available on computer networks, provides temporary use of nondownloadable software applications. Picture of business sign for store showing trademark.
Widespread use of video downloader doesnt save inadequate. Dec 14, 2012 after his notice of allowance issued, he submitted a specimen that was a photo of a youtube page with his statement of use. This opinion is not a precedent of the ttab mailed. Two recent trademark decisions provide ammunition for. Us20120144468a1 systems, methods, and computer program. United states patent and t o this opinion is not a trademark. Uspto tsdr case viewer united states patent and trademark. 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. For apps, the best specimen is a screen capture of the app store listing clearly showing the mark. They are not acceptable if the mark as shown is merely used as a trade name and. If the website simply advertises the software without providing a way to download, purchase, or order it, the specimen is unacceptable.
Well, class 42 is software thats essentially nondownloadable. Providing temporary use of nondownloadable computer software for retirement planning, in. Before you register the name of your application or software program, you. Class 42 is a service that allows software to be used for various purposeswith the software. 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. Xii a warning must be written in to the act, adressing fraud in the trademark process.
A specimen is a means of providing proof of your goods or services to the uspto. Trademark class 42 is a trademark class used by the united states patent and. If the website simply advertises the software without providing a way to download it, the specimen is unacceptable. Is there a second life for trademarks in second life. The signatory believes that the applicant is the owner of the trademarkservice mark sought to be registered. How to meet the commercial use requirement for an app. Classes like 9 and 42 are so similar, in fact, that class 9 includes downloadable software while class 42 includes nondownloadable. Estrada, trademark examining attorney, law office 104, chris doninger, managing attorney. How to meet the commercial use requirement for an app trademark.
A trademark specimen should be a label, tag, or container for the goods, or a. Providing temporary use of nondownloadable computer software for. Us patent application for systems, methods, and computer. Trademark owners must be advised to keep their own download andor paper printout of their trademark. Such a specimen is acceptable only if it provides sufficient information to enable the user to download the software from the website. Specimens are not required with the initial filing of an intenttouse itu. There are other things that it has, software consultancy, but this is nondownloadable, and class nine is downloadable. Mark is shown in large font at the top of the webpage and in the middle of the webpage. Apr 29, 2014 class 9 is a software product that can be made and sold separately from other products or services.
This opinion is a precedent of the ttab trademark trial and. Mar 18, 2010 iv disclose the names of any alternative accounts or future accounts to the plaintiffs. A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods. What is the difference between class 9 software and class. The uspto has imposed various rules and guidelines on what constitutes an acceptable specimen of use. 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. Providing temporary use of nondownloadable computer software for retirement planning, in class 42. Applicant is using servicemarktrademark in conjunction with. What is the trademark classification for software to be. Mailing and hand carry addresses for mail to the united states patent and trademark office reference collections of u. 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. A specimen is an example of the trademark used in connection with the goods or services provided to the government. Such a specimen is not acceptable for the socialnetworking services since it. In the case of products, specimens can be labels and packaging, a logo displayed on the product itself, etc.
For downloadable computer software, an applicant may submit a specimen that. Trademark examiners know that not all trademarks necessarily compete with one. Original specimen is described as website offering purchase and download of. Specimens of continued use are also required when maintaining or renewing a trademark registration.
Ic 042 providing temporary use of online nondownloadable cloud computing software for specify the function of the programs, e. For apps, the best specimen is a screen capture of the app store listing clearly showing. Downloads made by friends and family or from yourself for the sole purpose of. How to register your software app name as a trademark nolo. Nov 25, 2014 this opinion is not a precedent of the ttab mailed. The program goes by the catchy name pilot program to allow amendments to. Apr 29, 2016 software as a service featuring software to identify, store, report, monitor, upload and download data and information from a wearable digital electronic device in class 042. After his notice of allowance issued, he submitted a specimen that was a photo of a youtube page with his statement of use. A trademark application covering goods or services related to the sale of bands for smart watches would not surprise me, as other fashion brands are doing the same, but. Raynes of symbus law group, llc, for logixhealth, inc.
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. For downloadable computer software, an applicant may submit a specimen. The following examples qualify as acceptable specimens for services in order of preference. If it is not readily apparent that the specimen meets the criteria for an. Notice of maintenance fees payable title 37 code of federal regulations cfr, section 1. How to provide a good specimen proof of use witmart. Software as a service featuring software to identify, store, report, monitor, upload and download data and information from a wearable digital electronic device in class 042. For downloadable software, copies of the instruction manual and screen. What is the trademark classification for software to be used.
If needed, dont hesitate to consult an expert such as a trademark attorney to ensure you register your trademark with the correct class. Rapid global business solutions, inc us trademark search. Tsdr help united states patent and trademark office. 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. 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. 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. Keep in mind that specimens for goods differ from specimens for services. A photocopy or other reproduction of a specimen of the mark as actually used on or in connection with the goods is acceptable. For downloadable software, copies of the instruction manual and screen printouts. Classes like 9 and 42 are so similar, in fact, that class 9 includes downloadable software while class 42 includes nondownloadable software.
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