In order to get a trademark registered or maintain a registration, an example of use of the trademark (referred to by trademark nerds as a “specimen”) must be submitted to the US Trademark Office. Often trademark attorneys rely on the most readily available specimen that they can find: their client’s website. But if the website doesn’t meet the Trademark Office’s strict requirements, they will often ask for a few tweaks or request an image showing use of the mark on product packaging, marketing materials, or a manual.
So here are three of the biggest pitfalls trademark attorneys see when it comes to trying to use websites as specimens, and how you can avoid them:
1. If you sell goods, let me “buy it now” or “add it to cart” – or at least give me all the information I need to buy it from you.
For goods like apparel, golf balls, or political bumper stickers, in order to use a webpage as a specimen, it must have the following elements:
(1) a picture or textual description of the identified goods;
(2) the trademark shown in association with the goods; and
(3) a means for ordering the identified goods.
There must be a way for a customer to order the goods directly from the applicant’s web page, preferably a “Buy It Now” or “Add To Cart” link. But if being your own e-commerce retailer is not feasible, you can include a telephone number and explicitly state that orders can be placed through there. Listing distributors or simply having the company’s phone number and address on a webpage won’t suffice.
2. Be clear about the services that you provide.
For marks used on services, the webpage must sufficiently reference the services so that one can conclude that the mark is being used in connection with the claimed services. If an inference needs to be made about your services because the language used on your website is vague, then it will likely be rejected under recently revised examination guidelines from the Trademark Office. Often either clearly referencing your services on an “about” page with use of the mark or by using simple headers that identify key aspects of your services rather than just long paragraphs, this can help ensure that the website specimen is promptly accepted.
3. Your website’s so fancy, you already know, that no one can get a screen grab of the mark used near the goods or services.
Like Iggy Azalea, we all like modern, cutting-edge websites, but if someone can’t print it or do a screen capture that clearly shows the mark used near the goods or the description, it’s not going to work. Don’t let your trademark feel too lonely. A simple fix in many cases is simply replacing “we” with your brand.
The more that marketing teams and the legal department can bring awareness to this and can work together to review websites, catalogs, and other trademark use, the more both teams will come out feeling like this: