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-
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-
Audiovisual Content
Content-
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-
TMEP 1301.04(h)(iv)(C) Webpages
Webpages from an applicant’s or a third-
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-
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-
Just because an applicant is conducting an internet-
"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-
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-
SPECIMENS: Webpages
TMEP 1301.04(h)(iii) Specimens for Technology-
Proper specimen analysis requires consideration of the nature of the identified services. Modern computer and technology-
It may be unclear, based on the submitted specimen, whether the applicant is providing non-
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-
TMEP 1301.04(i) Examples of Acceptable Service-
Cloud-
EXAMPLE 1
Cloudlab webpage advertising computer services.
Mark: CSC CLOUDLAB
Relevant Services: Infrastructure as a Service (IAAS) services, namely, providing web-
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-
"CloudLab Cloud Application Testing Services delivers on-
Mark-
EXAMPLE 2
Original Specimen
[Screenshot of Parse webpage displaying fill-
Substitute Specimen
[Screenshot of Parse webpage advertising computer services.]
Mark: PARSE
Services: Platform as a service (PAAS) featuring computer software platforms offering server-
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-
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-
EXAMPLE 4
[Screenshots of StaffTap home screen and sign-
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-
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-
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-
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-
"A dedicated team of specialists delivers pre-
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-
Mark-
Non-
EXAMPLE 6
[Screenshot of Myfitage webpage showing sign-
Mark: MYFITAGE
Services: Providing temporary use of non-
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-
Mark-
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-
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-
Class 42 services are referenced in the following statements:
"Cloud-
"Any device. Any time. Anywhere.......ClinicAnywhere."
Mark-
Application-
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-
Telecommunications Services
EXAMPLE 9
Original Specimen
[Screenshot of GovHub webpage showing pictures of government officials and a fill-
Substitute Specimen
[Screenshot of GovHub webpage showing sign-
Mark: GOVHUB
Services: Providing on-
Analysis:
Original specimen is described as "website screen-
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-
Mark-
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-
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-
The wording "Join Now! Get the latest feel-
The wording "Latest Videos" and the images of several videos appear near the bottom, implying that other videos are available for broadcast.
Mark-
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-
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-
Mark-
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-
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-
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-
Mark: KURBKARMA
Services: On-
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-
EXAMPLE 16
[Above: Screenshot of Vtech Direct webpage containing sign-
[Below: Screenshot of Vtech Direct webpage advertising the online business-
Mark: VTECH DIRECT
Services: Providing a web site for online business-
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-
"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-
Mark-
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-
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-
StepsToATrademark.com
66-
TMk®
Not Just Patents®
Aim Higher® Facts Matter
W@TMK.law best or
1-
(Calls are screened for ‘trademark’ and other applicable reasons for the call)