Brief Guide from the TMEP (Trademark Manual of Examining Procedure) on

How to Pick a Proper Identification of Goods and Services  

(if you are a Content Provider) and How to Select A Specimen

(Are you a Content Provider?)


TMEP 1402.11(a)(ii)    Content Providers

The term "content provider" is generally used to indicate a person or entity that provides information or entertainment content for use on the internet or electronic media. Content-provider services may be classified in a variety of classes depending upon the nature of the activity provided. Thus, the activity provided must be specified in the identification. As discussed below, the subject matter of the services may also be required for appropriate classification.

Information Provider Services

The service of providing information via the Internet is classified in the class of the information subject.  Entities that provide these services by computer are considered to be "content providers," that is, they provide the informational or substantive content of a website and/or home page.  If an entity provides information in a wide variety of fields, the applicant must select the subject matter to be protected and classify the services accordingly (e.g., business information in Class 35, banking information in Class 36, home repair information in Class 37).  See TMEP §1402.11(b) regarding information services.

Some acceptable identifications:

"Providing business information via a website in Class 35."

"Providing a website featuring information in the field of banking, in Class 36."  This is purely an information provision service and should be treated accordingly.  The website is the means and not itself a classifiable service.

"Providing real-time information concerning vehicle parking space availability, in Class 39."

Audiovisual Content

Content-provider services involving the provision of online, non-downloadable videos are classified in Class 41 regardless of the subject matter of the videos. The subject matter of the videos must also be included in the identification to assist in likelihood of confusion determinations under 15 U.S.C. §1052(d).  For additional information on identifying and classifying computer entertainment services, see TMEP § 1402.11(a)(vii).


Other Services Offered by Content Providers

Businesses and individuals commonly provide content services in addition to other types of services. For example, Internet Service Providers (ISPs) often provide online content as well as Class 38 internet access services. For information about identifying telecommunications services provided by ISPs, see TMEP § 1402.11(a)(iii). Online audiovisual content providers may similarly offer both video-streaming services in Class 38 and online non-downloadable videos in Class 41. Content providers also may provide a variety of technological services, such as website hosting, in Class 42. Each service on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce should be set forth in the application. 15 U.S.C. §§1051(a)(2)   and 1051(b)(2); 37 C.F.R. §2.32(a)(6). For multiple-class application requirements, see TMEP §1403.01.


TMEP 1301.04(h)(iv)(C)    Webpages

Webpages from an applicant’s or a third-party’s website are routinely submitted as advertising and are acceptable if they show the mark used as a service mark, explicitly/textually reference the identified services, and associate the mark with those services.

Webpages lacking a reference to the services may be acceptable if they show use of the mark in rendering the services. See TMEP § 1301.04(i), Example 14 (OUTERNAUTS).


Webpages from social-networking websites should be scrutinized to ensure that the mark is properly associated with the identified services. Some applicants may mistakenly mischaracterize their services as "social networking" because they assume that advertising or promoting their non-social-networking services via a social-networking website means they are providing social-networking services. For instance, an applicant may mistakenly file an application for "online social-networking services" and provide a Facebook® webpage as a specimen when, in fact, they operate a pet store and are only using the Facebook® website to advertise the pet store and communicate information to and messages with actual and potential customers. Such a specimen is not acceptable for the social-networking services since it does not demonstrate that the applicant is providing these services. (Emphasis added)



TMEP 1402.11(a)(iii)    Provision of Telecommunications Connections to the Internet

Telecommunication connections, such as those provided by AT&T® and Verizon®, are the wired, or wireless, electronic means by which one telecommunications-enabled device, such as a telephone, smartphone, or computer, communicates with another telecommunications-enabled device.  The Class 38 activities of a telecommunications connection provider do NOT include providing the computer hardware or software that enables the electronic transmission of the data. These telecommunications services connect the user’s device to the internet via wired or wireless means.

Just because an applicant is conducting an internet-based activity or rendering a service that involves electronic transmission of data, the applicant’s service is not automatically considered a telecommunications service in Class 38.  For example, an applicant who merely provides a website featuring sports information is not providing "electronic transmission of messages and data in the field of sports," in Class 38.  The telecommunications services providers, such as AT&T® and Verizon®, are providing the Internet connections for the actual transmissions; the applicant is merely making the information available.

"Online bulletin boards" and "chat rooms" are classified in Class 38 regardless of the content or subject matter.  The rationale for this stems from the fact that these services allow individuals to communicate with each other, like other Class 38 services.

"Providing multiple-user access to the Internet," is classified in Class 38.   Note:  This identification covers those services provided by Internet Service Providers ("ISPs"), such as Cox®, AOL®, Comcast®, Verizon®, and AT&T®.  ISPs provide the computer connection (often using the Class 38 telecommunications services of other entities) that enables a computer user to access the databases and websites of others via the Internet.  These entities are considered "access providers" in that they provide the computer connection needed for a computer user to access a content provider.  The word "access" should be limited to these services and should not be used in describing the services of a content provider.

Some acceptable identifications:

"Providing telecommunications connections to the Internet or databases, in Class 38."

"Transmission of electronic mail, in International Class 38."

"Broadcasting of video and audio programs over the Internet, in Class 38."

"Webcasting services, in Class 38."

"Web conferencing services, in Class 38."

"Providing online chat rooms for transmission of messages among computer users concerning topics of interest to teens in Class 38."

"Providing multiple-user access to the Internet in Class 38."  Many ISPs have expanded their services to encompass content-based services for their subscribers.  The "providing multiple-user access" identification only covers the ISP services.  If the applicant wishes to protect its "content-based" services, it must identify those services with specificity and pay any additional fees, as appropriate. For information on identifying and classifying content-provider services, see TMEP § 1402.11(a)(ii).


SPECIMENS: Webpages

TMEP 1301.04(h)(iii)    Specimens for Technology-Related Services

Proper specimen analysis requires consideration of the nature of the identified services. Modern computer and technology-related services present special challenges because these services, and the terminology used to describe them, are continually evolving. In addition, any online activity entails the use of computer software, making it difficult to differentiate the various services provided online from the underlying technology used to provide them. As the Board has noted, "[a]lthough it may well be software that is generating the [services], in today's commercial context if a customer goes to a company's website and accesses the company's software to conduct some type of business, the company may be rendering a service, even though the service utilizes software." In re Ancor Holdings, LLC, 79 USPQ2d 1218, 1221 (TTAB 2006) .

It may be unclear, based on the submitted specimen, whether the applicant is providing non-software services in a given field or subject matter (e.g., "financial consulting in the field of retirement planning" in Class 36), or offering computer software or application services involving that same field or subject matter (e.g., "providing temporary use of non-downloadable software for retirement planning" in Class 42), or both. Sometimes, an applicant that is actually providing non-downloadable software services (e.g., "providing temporary use of non-downloadable software for medical billing" in Class 42) misidentifies the services as the underlying function of the software (e.g., "medical billing" in Class 35). Similarly, the applicant may be using social networking websites to advertise non-social networking services (e.g., operating a pet store) and communicate with customers, leading the applicant to misidentify the services as "online social networking services" in Class 45.

Thus, a primary consideration in these instances is whether the specimen indicates that the applicant is actually performing the relevant service activities for others, or, for instance, merely providing software that allows users of the software to perform those activities themselves, or only offering an online game that is accessed via a social networking website. See TMEP § 1301.04(i), Example 5 (ATHENACOORDINATOR), Example 7 (CLINICANYWHERE), and Example 14 (OUTERNAUTS).

Furthermore, some traditional services, and the associated terminology, may require fresh understanding and broader interpretation in the modern commercial environment. More and more traditional services are now offered online and, increasingly, multiple services are seamlessly integrated, creating difficulty in distinguishing the source of the services. For instance, television programs that were once provided only by broadcast television and cable outlets are now also accessible via streaming services like Netflix®, Hulu®, or YouTube®. Thus, typical service identification terms like "broadcasting," "distribution," and "transmission" have taken on new meaning in the modern marketplace. Thinking of traditional and other services more broadly and being cognizant of the current marketplace realities will also help the examining attorney determine whether the specimen properly shows use of the mark in association with the identified services.

When the nature of the services is not readily apparent from the information of record, such as the identification and specimen, the examining attorney may consult several resources for research and guidance, including: the notices and notes in the U.S. Acceptable Identification of Goods and Services Manual (ID Manual); the applicant’s and third-party websites; telephone or e-mail communication with the applicant or applicant’s attorney; technology dictionaries, encyclopedias, and trade and industry publications; and the Office of Trademark Classification Policy & Practice. In addition, the Trademark Law Library is available to assist examining attorneys with research. Finally, the examining attorney may require the applicant to provide further information about the services, pursuant to Trademark Rule 2.61(b). 37 C.F.R. §2.61(b).



TMEP 1301.04(i)    Examples of Acceptable Service-Mark Specimens

Cloud-Computing Services


EXAMPLE 1


























Cloudlab webpage advertising computer services.

Mark: CSC CLOUDLAB

Relevant Services: Infrastructure as a Service (IAAS) services, namely, providing web-based use of virtualized computer hardware, networking, and storage equipment on a utility computing basis, namely, providing virtual computer systems and virtual computer environments through cloud computing, in Class 42.

Analysis:

Specimen is described as "web page screenshot" and appears to be advertising.

Mark is displayed near the top center of the webpage in large, color font, and in the middle center of the webpage at the beginning of a statement shown in bold font.

Services are referenced in the following statements:

"CSC CloudLab offers on-demand, web-based access to virtual machines and data centers."

"CloudLab Cloud Application Testing Services delivers on-demand scalable, virtualized infrastructure."

Mark-services association is present because the mark is used directly in connection with the services in textual statements describing the services, and is placed immediately above explicit/textual references to the services.


EXAMPLE 2

Original Specimen












[Screenshot of Parse webpage displaying fill-in fields for signing up for Parse software goods.]


Substitute Specimen















[Screenshot of Parse webpage advertising computer services.]


Mark: PARSE

Services: Platform as a service (PAAS) featuring computer software platforms offering server-side functionality to provide backend services, namely, data storage, push notifications and user management, all for mobile applications, in Class 42.

Analysis:

Original specimen is described as "website offering purchase and download of Parse software"; the substitute specimen is described as "website advertising."

On the substitute specimen, the mark is presented in large font on the top of the webpage and on the screen of an electronic device.

Original specimen was refused because the specimen and its description indicated the mark is used in association with software goods rather than PAAS services.

Substitute specimen is acceptable due to the following statements referencing the services and the following indicia of the context in which the services are rendered:

The wording "The mobile app platform for developers" and "Add a powerful and scalable backend in minutes for your Marketing App" describes the nature of the services.

The "Manage your apps" button indicating that the services are accessed by clicking on the button.

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. Here, the mark is in close proximity to explicit textual references to the services and the "Manage your apps" button, thus creating the mark-services connection.


EXAMPLE 3




























[Screenshot of Montagable webpage advertising computer services.]


Mark: MONTAGABLE

Services: Computer software platform as a service (PAAS) featuring computer software platforms for application building, in Class 42.

Analysis:

Specimen is described as "screenshots" from applicant’s website and appears to be advertising.

Mark is prominently shown in large font on the top of the webpage.

Services are referenced in the following statements:

"Montagable is a better way to build web apps."

"Thanks to our exclusive, structureless database platform, it’s incredibly quick and painless to get your custom app up and running . . . ."

"Everything’s hosted and managed on our secure services, so you can always get to it with any internet connection."

Mark-services association is present because the mark is used directly in connection with the services in textual statements describing the services, and is placed immediately above explicit textual references to the services as well as in statements referencing the services.


EXAMPLE 4




















[Screenshots of StaffTap home screen and sign-in screen with fill-in fields for logging in, and schedule screen showing schedule for Friday and Saturday. The right-hand side shows a screenshot of StaffTap showing a date and time grid for scheduling tasks and menu options for utilizing the staff management funcitons of the software services.]


Mark: STAFFTAP

Services: Software as a service (SAAS) services featuring software for use in staff management and related scheduling tasks, in Class 42.

Analysis:


Specimen is described as "screenshot capture of a representative online portal" and appears to show the mark used in rendering the services.

Mark appears prominently in large font on a launch screen, on the sign-in screen, and on the top of a screen displaying the software services in use.

Services are indicated by the context in which they are rendered, as follows:

A launch screen with the wording "Version 1.0.27" indicates the version of the online software services being rendered.

The "Employee Login" screen indicates that one must log in to access the software services and the subsequent screen shows the schedule for Friday and Saturday.

A screen showing a date and time grid for scheduling tasks and the menu on the left containing options, including "Manage My Shifts" and "View Task Assignments," indicates the staff management functions of the software services.

Mark-services association is present because the mark appears on the launch screen where it is customary in such industry to place the mark under which the services are offered and such placement is recognized as the introduction of the online services; and the mark also appears on the sign-in screen where it is customary to input credentials to gain access to online services. The context in which the mark is used, i.e., on the title and sign-in screens, creates the mark-services connection (since using such screens is common practice for rendering such services) and implies that the services are available and rendered once the user initiates access to the services by logging in. The launch screen alone is acceptable because it is generally known that such screens are used to initiate the start up of or access to online services. The sign-in screen is also acceptable on its own since it is a generally known means of accessing online services. The mark is also displayed on another screen which shows the mark while the services are being performed and, thus, the proximity of the mark to the services conveys a connection.


EXAMPLE 5























[Screenshot of AthenaCoordinator webpage advertising physician order support, medical practice management, and computer services.]


Mark: ATHENACOORDINATOR

Services: Physician order support services and medical practice management services relating to medical tests and procedures, namely, verifying patient eligibility and benefits, handling scheduling requests, obtaining insurance pre-certifications, handling patient pre-registrations, and collecting self-pay balances from patients, in Class 35; and Software as a service (SAAS) services featuring software for use in communications between physicians and other participants in the health care system with respect to orders for medical tests and procedures, in Class 42.

Analysis:


Specimen is described as a "brochure" and appears to be advertising.

Mark appears prominently in large font on the top of the brochure.

Class 35 services are referenced in the following statements:

"Through software and service, we deploy critical knowledge to support effective and efficient care coordination."

"A dedicated team of remote specialists with essential clinical and payer knowledge verifies eligibility and benefits. They also obtain required insurance pre-certifications to ensure claims get paid the first time."

"A dedicated team of specialists delivers pre-registration services to ensure order fulfillment, registering patients in the hospital system and collecting self-pay balances. Patients and physicians benefit from an efficient registration process."

Class 42 services are referenced in the following statements:

"Through software and service, we deploy critical knowledge to support effective and efficient care coordination."

"The web-based platform facilitates easy order entry and status for physician, enables our pre-certification and pre-registration services and delivers a "clean" order to the hospital."

Mark-services association is present because the mark is used directly in connection with the services in textual statements describing the services, and is placed immediately above explicit textual references to the services.



Non-Downloadable Software Services

EXAMPLE 6



























[Screenshot of Myfitage webpage showing sign-in screen with fill-in fields for logging into and accessing the computer software services.]


Mark: MYFITAGE

Services: Providing temporary use of non-downloadable computer software for retirement planning, in Class 42.

Analysis:


Specimen is described as "web printout" and appears to show the mark used in rendering the services.

Mark is shown in large font at the top of the webpage and in the middle of the webpage.

Services are referenced in the following statements and indicated by the context in which they are rendered, as follows:

The wording "financial planning simplified" appears above the mark.

The wording "Financial Independence Target" appears below the mark.

"myFiTage is your reality check. It estimates your FiT Age – the earliest age where your future financial resources are expected to exceed your future living needs."

"Log in" fields are provided for accessing the non-downloadable software.

Mark-services association is present because the mark appears on the sign-in screen where it is customary in such industry to input credentials to gain access to online services. The context in which the mark is used, i.e., during the sign-in process, creates the connection with the services since sign-in screens are common practice and imply that the services are available and rendered once the user logs in. Additionally, the mark is used directly in connection with the services in textual statements describing the services, and is placed above and below statements referencing the services, further conveying the mark-services connection. The sign-in screen alone would also be acceptable even if the services were not textually referenced since it is a generally known means of accessing online services. The specimen is acceptable both as an advertisement and as showing the mark in rendering the services.


EXAMPLE 7




































[Screenshot of ClincAnywhere advertisement for medical billing and computer software services.

Mark:]





[ClinicAnywhere Mark Image]

Services: Medical Billing Support, in Class 35; and Providing on-line, non-downloadable, Internet-based software application for medical billing for physicians and health care institutions, in Class 42.

Analysis:


Specimen is described as an advertisement.

Mark is prominently displayed in large, color font in the middle of the advertisement.

Class 35 services are referenced in the following statement:

"Top-notch Medical Billing Services."

Class 42 services are referenced in the following statements:

"Cloud-based Practice Management and EHR Solutions."

"Any device. Any time. Anywhere.......ClinicAnywhere."

Mark-services association is present because the mark is used directly in connection with the services in textual statements describing the services, and is placed immediately below explicit textual references to the services.


Application-Service-Provider (ASP) Services

EXAMPLE 8





























[Screenshot of Ticket Central webpage showing the applicant's mark Insite Ticketing for application service provicer services.]


Mark: INSITE TICKETING

Services: Application service provider (ASP), namely, hosting computer software applications for others in the field of ticketing and related ticketing services, in Class 42.

Analysis:


Specimen is described as a "screen shot" and appears to show the mark used in rendering the services.

Mark is prominently displayed on the bottom of the screenshot.

Services are indicated by the context in which they are rendered, as follows:

The mark is displayed directly below the area where customers purchase tickets, thereby indicating that the ASP hosting or providing the software services is INSITE TICKETING.

The wording "Technology by" placed next to the mark, implies that the software technology services that are operating the website are provided by the applicant.

Mark-services association is present because the mark is displayed on the screen where the services are rendered and experienced. While another mark, "Ticket Central," is shown on the top left of the webpage, it appears to be associated only with ticket-purchasing services, not ASP services, and thus does not detract from associating the applied-for mark with the identified services.


Telecommunications Services

EXAMPLE 9

Original Specimen















[Screenshot of GovHub webpage showing pictures of government officials and a fill-in field for leaving feedback.]















Substitute Specimen

[Screenshot of GovHub webpage showing sign-in fields for logging in and accessing on-line forum services.]


Mark: GOVHUB

Services: Providing on-line forums for transmission of messages among computer users, in Class 38.

Analysis:


Original specimen is described as "website screen-shot" and the substitute specimen is described as "screenshot of the homepage of the website."

Mark is presented on the substitute specimen at the top right of the webpage.

Original specimen was refused because it failed to reference the services.

Substitute specimen is acceptable because the services are indicated by the following:

"Sign in to GovHub" indicates that a user may log in to use the services, i.e., read and send messages.

"Top Discussions" shows two discussion topics in progress, and the "5" and "0" shown in the color blue specify that there are 5 messages posted for the first discussion and 0 for the second discussion, indicating that the services involve on-line forums for transmission of messages.

Mark-services association is present on the substitute specimen because it is customary to display service marks near the top of the webpage on which the services are advertised or through which they are accessed, rendered, and experienced. Here, the mark is in proximity to indicia implying the services and no other marks appear to negate the mark-services connection. While the services are not explicitly textually referenced, when viewing the heading "Top Discussions," the two discussion topics below it, and the "5" and "0" messages posted about the discussion topics – all these factors together indicate that applicant is offering online forum services.



EXAMPLE 10





























[Screenshot of Hometown Sounds webpage showing a schedule of music programs and a link for streaming music.]

Mark: HOMETOWN SOUNDS

Services: Electronic transmission and streaming of digital media content for others via global and local computer networks; Streaming of audio material on the Internet; Transmission services via the Internet, featuring MP3 files and music videos, in Class 38.

Analysis:


Specimen is described as "website for Hometown Sounds" and appears to show the mark used in rendering the services.

Mark is presented in large font on the top of the webpage.

Services are referenced in the following statements and indicated by the context in which they are rendered, as follows:

The wording "DC’s local music internet station" describes the services.

The wording "Listen Now" indicates that the website may be used to stream audio content.

The link "Click Here to listen to Hometown Sounds" indicates that the services are accessed by clicking on the link.

Mark-services association is present because it is customary to display service marks near the top of the webpage on which the services are advertised or through which they are accessed, rendered, and experienced. Here, the mark is physically close to indicia implying the services and no other marks appear to negate the mark-services connection. The mark appears above textual references to the services as well as in textual instructions for accessing the services, which further conveys the mark-services connection. The specimen is acceptable both as an advertisement and as showing the mark in rendering the services.



EXAMPLE 11



























[Screenshot of HooplaHa webpage diplaying a play button for playing a video about hurricane healing, and showing latest videos on other topics that are available for viewing.]


Mark:







[HooplaHa with bird mark image]

Services: Broadcasting of video and audio programming over the Internet, in Class 38.

Analysis:


Specimen is described as "web page" and appears to show the mark used in rendering the services.

Mark is shown in large font on the top of the webpage.

Services are indicated by the following:

A freeze-frame of a video featuring a play button is displayed, indicating the services are accessed by clicking the play button.

The wording "Join Now! Get the latest feel-good videos, news and events" conveys the different content that is available for broadcast.

The wording "Latest Videos" and the images of several videos appear near the bottom, implying that other videos are available for broadcast.

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. Here, the mark is sufficiently near indicia implying the services and no other marks appear to negate the mark-services connection. While the nature of the services is not explicitly textually referenced, the display of the play button and "Latest Videos" indicate that applicant is offering broadcasting services.



Entertainment Services

EXAMPLE 12




























[Screenshot of Cinemax webpage advertising various television programs.]


Mark: CINEMAX

Services: Entertainment services in the nature of providing entertainment programming and content, namely, on-going television programs, and related clips and graphics and information relating to television programming and content in the fields of comedy, drama, action, adventure via television, cable and satellite systems, the Internet, electronic communications networks, computer networks and wireless communications networks, in Class 41.

Analysis:


Specimen is described as "mark as used in commerce on specified goods and services" and appears to be a webpage advertising some of the identified services and rendering other identified services.

Mark is displayed prominently at the top of the webpage.

Services are referenced in the following wording and statements:

The navigation tabs at the top "VIDEOS," "SCHEDULE," "ORIGINAL SERIES," "MOVIES," and "AFTER DARK" indicate the entertainment content available.

The play button next to "WATCH PREVIEW" indicates that a clip of the show "ASYLUM BLACKOUT" may be viewed.

The reference to "BANSHEE" states "From the creator of ‘True Blood’ comes a Cinemax original series about a small town where nothing is as it seems . . .," advertising another on-going television program.

Mark-services association is present because it is customary to display service marks near the top of the webpage on which the services are advertised or through which they are accessed, rendered, and experienced. Here, the mark is sufficiently near textual references to the services, thus indicating the mark-services connection.



EXAMPLE 13


























[Screenshot of the title screen of a television program about cooking.]

Mark: DELICIOSO

Services: Entertainment and education services, namely, ongoing television program concerning cooking and nutrition, in Class 41.

Analysis:


Specimen is described as a "photo of opening title of applicant's television program" and appears to show the mark used in rendering the services.

Mark is prominently shown in large font on the title screen of an electronic device that is displaying the ongoing television program.

Mark-services association is present because the mark appears on the title screen where it is customary in such industry to place the mark under which the services are promoted. It is common practice for a title screen bearing the mark to appear at the start of entertainment content and indicate the launch of the services. While the nature of the services is not textually referenced, it is sufficient that the overall content of the specimen implies that applicant is offering entertainment services.

The specimen would be unacceptable without the specimen description, which clarifies that the specimen is an "opening title" and places the mark in the context of providing the services. Since the specimen could possibly be print advertising, a specimen description is necessary to clarify the nature of the specimen. The top right corner of the specimen shows some wording that suggests that the title screen is displayed on an electronic device. However, since that wording is not legible and the context of the title screen is not visible, the nature of the specimen is unclear and, thus, a specimen description is required clarifying that it is a title screen.



EXAMPLE 14























[Screenshot of Facebook webpage displaying the applicant's mark Outernauts on the launch screen of a video game.]

Mark: OUTERNAUTS

Services Entertainment services, namely, providing online video games, in Class 41.

Analysis:


Specimen is described as a "screenshot of the page on Facebook.com, an Internet website, from which the services are provided to users" and appears to show the mark used in rendering the services.

Mark is prominently shown in large font near the top of the webpage.

Services are referenced in the following statements and indicated by the following:

The mark appears near video game information "Get Star Gems," "Leaderboard," and "loading Outernauts."

The mark appears near the word "Games," generally referencing the services.

Mark-services association is present because it is customary to display service marks near the top of the webpage on which the services are advertised or through which they are accessed, rendered, and experienced. Here, the mark is near indicia implying the services and other marks appear to cloud the mark-services connection. While the specimen shows the webpage is from a third-party website, i.e., Facebook®, this does not diminish the requisite association due to the proximity of the applied-for mark to the matter indicating the online services, which appear to be directly launched from the website. The screenshot also appears to be of the title or launch screen of the online video game, where it is common practice in such industry to place the mark under which the services are promoted and where such placement is recognized as the introduction of the online services. The screenshot here implies, and it is generally known, that access to and performance of the services begins with this screen. The specimen description combined with the wording "loading Outernauts" further supports the mark-services connection. The specimen is also acceptable as an advertisement since the word "Games" appears on the lower left corner as part of a third-party mark "Insomniac Games." It may be inferred that the combination of the applied-for mark OUTERNAUTS with the reference to "Games" and to "EA" sufficiently and textually references the online video game services.


EXAMPLE 15


































[Screenshot of iTunes webpage displaying two screenshots of an iPhone, one being the home screen of a computer application and the other being a street map showing available parking spots for the on-line matching services.]


Mark: KURBKARMA

Services: On-line matching services for connecting automobile drivers with other drivers who are, respectively, searching for or departing from parking spaces accessible via a mobile application, in Class 35.

Analysis:


Specimen is described as "screenshot of the ITunes store which features Applicant's mark and describes Applicant's services."

Mark is displayed in bold font in the middle left of the webpage.

Services are indicated by the following:

The iPhone® screen images clearly and legibly show the wording "Have a Spot," "Need a Spot," and "Available Spots," indicating the services being performed by the applicant via the app.

Mark-services association is present because the mark is placed in sufficiently close proximity to the iPhone® screenshots, which show the services as they are accessed and rendered via the device.



EXAMPLE 16


[Above: Screenshot of Vtech Direct webpage containing sign-in fields for logging in and accessing the online business-to-business store services. ]







[Below: Screenshot of Vtech Direct webpage advertising the online business-to-business store services.]










Mark: VTECH DIRECT

Services: Providing a web site for online business-to-business store services featuring wireline telephony products and wireless fidelity streaming music devices; online business-to-business store featuring wireline telephony products and wireless fidelity streaming music devices, in Class 35.

Analysis:


Specimen is described as "pages from website" and appears to show the mark being used in both the advertising and rendering of the services.

Mark is displayed prominently in bold font on the top left of each webpage.

Services are referenced and indicated by the following:

"Sign In" fields are provided for accessing the online business-to-business store services, indicating that one may access the services by logging in.

"Tune in over 11,000 stations around the globe using wireless Internet access. Listen to music, sports, talk radio and more."

Image of an electronic streaming music device described as "IS9181 – (80-6569-02) Stream internet radio stations Stream digital music files stored on your PC or Mac Connect to your MP3 or CD player."

Mark-services association is present because it is customary to display service marks near the top of the webpage on which the services are advertised or through which they are accessed, rendered, and experienced. Here, the mark is near explicit textual references to the services, thus conveying the mark-services connection. The webpage showing the sign-in fields is an acceptable specimen since signing-in is a generally known means of accessing online services. Thus, the specimen is acceptable both as an advertisement and as showing the mark in rendering the services.



EXAMPLE 17






















[Left: Screenshot of McGowan Group webpage showing applicant's mark CashFlow Units for financial sevices offered by McGowan Group Asset Management company. Right: Screenshot of McGowanGroup webpage displaying applicant's mark CashFlow Units immediately above links to two documents, one for MGAM Wrap Program Assets Discretionary Advisory Agreement and the other for MGAM RIA Disclosure. ]


Mark: CASHFLOW UNITS

Services: Investment products, namely, wealth management and performance tracking, and providing financial advisory and financial portfolio management services, in Class 36.

Analysis:


Specimens are described as "webpages."

Mark is placed below "the McGowanGroup Asset Management banner."

The Board held the specimen acceptable as showing use of the mark in rendering the services based on the following findings:

"The disclosures at the bottom of one webpage inform the viewer that applicant is a ‘Federally Registered Investment Advisory Firm.’"

The mark "appears under the McGowanGroup Asset Management banner, thus informing the viewer that CASHFLOW UNITS are part of an asset management service."

Directly below the mark are links to two documents: (1) the "MGAM Wrap Program Assets Discretionary Advisory Agreement"; and (2) the "MGAM RIA Disclosure". The Board noted that the first document is the applicant’s contract and an offer to enter into an agreement for advisory services, and the second document is the applicant’s notice of compliance with the conflict of interest rules.

The mark on the webpage is placed "in close proximity to links for documents used by applicant in rendering those services" and "the links to these documents create an association between the mark and the offered service activity."



EXAMPLE 18

























[Screenshot of Ride411 webpage displaying search options for obtaining inforamtion about providers of car parts and car services.]

Mark: RIDE 411

Relevant Services: Providing an online search engine service for new and used automobile listings and automobile related information; Providing specific information as requested by customers via the Internet; Provision of Internet search engines; Provision of search engines for the Internet, in Class 42.

Analysis:


Specimen is described as "screen shot of our website" and appears to be a webpage advertising some of the identified services and rendering other identified services.

Mark is displayed in large, color font on the top of the webpage.

Services are referenced in the following statements and indicated by the context in which they are rendered, as follows:

"Simply type any keyword(s) into our search engine to find a group of suppliers for exactly what you are looking for, or select from a category and drill down from there."

The wording "Your destination for hard to find classic car parts, services, events & more" and "FIND ... How can I find hard to locate parts for my classic car?" indicates the nature of the services provided.

Hyperlinks appear under "Locate Parts," "Locate Services," and "Search By Category."

Services are provided primarily for the benefit of others, i.e., the users are able to view the search results from a variety of sources from the Internet in one list.

Mark-services association is present because it is customary to display service marks near the top of the webpage on which the services are advertised or through which they are accessed, rendered, and experienced. Here, the mark is near textual references to the services, thus indicating the mark-services connection. The mark is also near indicia of the services, i.e., searchable links and categories for locating automobile parts and services, which is also sufficient to show a mark-services association. Thus, the specimen is acceptable both as an advertisement and as showing the mark in rendering the services.



EXAMPLE 19



























[Screenshot of an Apple electronic device displaying specific social networking activity with people and on topics the user follows.]


Mark:

(stylized speech bubbles)

[Stylized Speech Bubble mark image]



Services: Online social networking services, in Class 45.

Analysis:


Specimen is described as "screenshot of applicant’s software" and appears to show the mark used in rendering the services.

Mark is displayed in the color blue at the bottom of the screen of an electronic device.

Services are indicated by the following:

A highlighted "People" tab appears at the top of the screen, as does a search bar containing the wording "Search for people."

The wording "People I Follow (41)" indicates that the user follows 41 people and the screen shows a list of people being followed, each specifying the number of "people in common."

Applicant explained that the specimen is a screenshot from an Apple® handheld mobile device showing the mark used in rendering the services.

Mark-services association is present because the mark appears on the screen of an electronic device via which the online services are accessed, rendered, and experienced. Additionally, the mark is displayed on the screen below indicia implying the services as well as showing the services as they are accessed and rendered via the device. The context in which the mark is used, i.e., while the services are being performed and experienced, creates the association with the services. The presence of a third-party mark (AT&T®) displayed on the top left of the screenshot does not detract from the applicant’s mark being associated with the services. The AT&T® mark denotes the telecommunication company that provides the connection to the Internet, but it appears that the applicant’s services enable online social networking.

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