Acceptable Trademark Application Specimens of Use – What are Point of Sale Displays?
Trademark Point of Sale Specimen
In my blog post here, titled “Trademark Application Specimens of Use: What is an Acceptable Specimen of Use?”I mentioned there are instances when trademark applicants may need to rely upon a “point of sale display” to show proper trademark use for products if they don’t use the mark in a traditional sense (i.e., labels affixed to the goods, mark depicted on the goods, mark depicted on packaging). In those cases, the Applicant may submit, what is known as, a “point of sale display.” Point of sale displays must adhere to strict guidelines, of which I have discussed and outlined below.
U.S. Patent and Trademark Office Campus
What are Point of Sale Displays?
A point of sale display (a/k/a displays associated with the goods) must be associated directly with the goods being offered for sale. The display must depict the trademark prominently. Displays associated with the goods comprise various types of point-of-sale materials, such as banners, window displays, menus, product literature used by outside sales representatives and even websites that allow for online orders.
The “displays” must be designed to catch the attention of purchasers and prospective purchasers as an enticement to make a sale. Furthermore, the display must prominently depict the applied-for mark and associate it with, or relate it to, the goods such that an association of the two is inevitable.
Important note: Promotional materials, such as brochures and webpages, that simply describe the goods and their characteristics or serve only as advertising literature are not per se “displays,” thus do not qualify as acceptable specimens of use for trademark application and registration purposes (for products).
In order to rely upon a point of sale display as a trademark application specimen of use for goods, the display must contain each of the following items:
(1) use of the subject trademark;
(2) near a picture of the goods or detailed description of the properties of the goods such that buyers know precisely what they are buying; and
(3) specific information on how to order the goods, i.e., telephone number or online shopping cart.
Trademark Manual of Examining Procedure §903 illustrates how the following webpage is an acceptable point of sale display, as it meets all three requirements:
Remember, the display must directly associate the mark and goods such that an association of the mark and goods is inevitable. In other words, the mark must be perceived as the brand name for the goods. Using a trademark on the top of a website, for example, that would be perceived as a service mark for online retail store services and not the brand name for the goods in question would not be an acceptable display associated with the goods for trademark application purposes.
The U.S. Patent and Trademark Office may not accept point of sale materials that do not clearly provide information on how to directly place an order.
The next time you decide to launch a new trademark for goods, but have no plans to affix the mark directly to the goods in any manner, you should consider alternative types of specimens of use for securing registration.
Tips for How to Respond to Trademark Office Actions Based on Likelihood of Confusion – Example Includes “Software”
Trademark Selection Hurdles
With the exponential growth of technology and small businesses over the past twenty years, selecting trademarks that are available for use and registration has become a daunting task for brand owners. That daunting task began during the .com bubble of the late ‘90s and has continued ever since. Since then, the U.S. Patent and Trademark Office (“USPTO”) has seen an explosion of trademark application filings as the Internet and technology have removed barriers to entry for small businesses.
The proliferation of new companies has resulted in the proliferation of new company names, trademarks and U.S. trademark applications and issued registrations, which have made the brand name selection and registration process somewhat challenging and potentially costly for brand owners.
Trademark Office Examination Hurdles
One potentially complex aspect of the U.S. trademark selection and protection process is navigating the USPTO registration process, which may entail battling conservative and, in some instances, unreasonable Trademark Examiners that refuse registration. One ground upon which an Examiner may refuse registration is “likelihood of confusion” or, in other words, that the Applicant’s mark is too similar to a mark (or marks) already listed on the USPTO database.
To read more about what constitutes “confusingly similar marks” read my post here.
Likelihood of Confusion Issue Raised in Trademark Office Actions
In any trademark infringement and likelihood of confusion analysis, the primary issue is whether a selected mark is likely to cause consumer confusion as to the source of certain products and/or services. For example, if consumers are familiar with the mark ACE for running shoes and a “new comer” launches the ACE brand of running pants, it’s reasonable to conclude that consumers would be confused as to the source of those goods (they would reasonably believe that the maker of ACE™ running shoes has expanded its product line to include ACE™ running pants).
Therefore, when Applicants respond to trademark Office actions, they must determine whether the parties’ respective goods/services are related such that they may be viewed by consumers as originating from the samesource.
Likelihood of Confusion and Software Products
Unlike the likelihood of confusion analysis for other types of products, such as clothing and office supplies, where the analysis may focus primarily on clothing vs. clothing and even clothing vs. hand bags and clothing vs. jewelry and office supplies vs. office supplies (generally), the analysis for software does not focus generally on software vs. software. Rather, the analysis for software must dive much deeper into the functionality of and fields of use for the software, trade channels, buyers and buyer sophistication.
Accordingly, when a mark for software products is refused registration on the ground the mark is too similar to another mark for software, you should first undertake a full review and analysis of the parties’ respective software products and delineate the differences in their functions, uses, channels of trade and buyers, if possible.
Common Trademark Attorney Mistakes
In many cases, the difference between success and failure with respect to overcoming a trademark application refusal depends upon how well you “thread the needle” and make compelling arguments in favor of registration. In most cases, it’s not the “beautifully-written” arguments that win. Rather, it’s the evidence that supports well-crafted arguments designed to convince the Trademark Examiner that the parties’ respective goods/services, including software products, are not of the type that would originate from the same source. Furthermore, arguments should include whether the marks are confusingly similar and whether relevant buyers would reasonably believe that the parties’ respective goods/services are of the type that would originate from the same source and/or whether those goods/services travel in the same channels of trade to the same class of buyers.
A big error that attorneys make when responding to trademark application Office action refusals is submitting the “tossed salad” response; making all arguments from all angles to see which argument “sticks” with the Examiner. Having been a USPTO trademark examining attorney, I can tell you that’s a big mistake and brings the Applicant’s attorney’s credibility into question, which ultimately can hurt the brand owner.
Simply put, if outside counsel does not understand which arguments are compelling for a case and prepares a “tossed-salad–response,” the Trademark Examiner simply cannot take any of the arguments seriously. For that reason, gathering compelling evidence first and only making relevant arguments is the best strategy for overcoming any trademark Office action refusal.
Strategies for How to Respond to Trademark Office Actions Based on Likelihood of Confusion
Navigate this Slippery Slope!
Below are examples of arguments and positions that we consider when responding to trademark Office actions based on likelihood of consumer confusion between marks for software:
1. The functionality and purpose of Applicant’s software are entirely different and distinct from the functionality and purpose of the software listed in the cited registration. [Explain why]
2. Applicant’s and cited registrant’s respective software products are used to carry out discrete, specific, and, most importantly, unrelated tasks. [Explain why]
3. It is well settled that an Examining Attorney must not only consider the similarities of the marks, but must also compare the goods and/or services to determine if they are related such that confusion as to origin is likely. The Examining Attorney must also consider all circumstances surrounding the sale of the goods and/or services, such as the marketing channels and the identity of the prospective purchasers. [Explain]
4. Applicant submits herewith information about its products and services at Exhibit A and information about the cited marks at Exhibit B, which clearly delineate the differences between parties’ respective software products. The materials attached in Exhibit A clarify that Applicant’s software products are software development tools and applications, while Exhibit B clarifies that the cited registrant’s highly technical and sophisticated software is used for data storage systems, which would be used by large commercial and/or government agencies. Applicant’s products and services, however, are used by software developers. Accordingly, the functionality of the parties’ respective software products is different and their software products would likely travel in different channels of trade to different types of buyers for different uses, which renders consumer confusion unlikely.
5. Although each of the parties offer software products and/or services, those products and services are used in different market niches and for different applications (data storage systems vs. computer software development tools), which further renders confusion between the parties’ marks unlikely. Goods may fall under the same general product category but operate in distinct niches. When two software products are part of distinct sectors of a broad product category, they can be sufficiently unrelated such that consumers are not likely to assume the products originate from the same source. [Explain why]
6. It is well-settled that the USPTO recognizes the “un-relatedness” of distinct product niches. A cursory review of the USPTO database indicates that the Office has consistently permitted registrations of identical and near identical marks for computer software as long as the functionality of the software products does not overlap and the software products are not of the type that would typically originate with the same source. Applicant submits herewith third party registrations for the identical mark for software…
Conclusion – How to Respond to Trademark Office Actions
Before drafting that “creative” and “beautifully-written” trademark Office action response that sounds great and impresses the reader, the attorney should first take a step back, understand the technologies, understand the business sectors at issue and gather compelling relevant evidence that supports the Applicant’s position and then prepare credible and well-crafted arguments in favor of registration.
