There are at least two kinds of buzz converging at the moment (perhaps three), especially for fashion forward and fit oriented trademark types here in Minneapolis.

On the one hand, with the holidays upon us it’s hard to avoid the barrage of billboard ads in the Minneapolis skyway promoting the first brick and mortar entry of Bonobos into the Minnesota marketplace, strategically located in the buzzing North Loop neighborhood of Minneapolis:

BonobosBillboard

On the other hand (or pant leg), are the increasingly vexing trademark specimen of use and Lanham Act use in commerce requirements administered by the USPTO that limit how a brand owner is able to properly demonstrate evidence of use that will effectively support trademark and service mark registration and the ongoing maintenance of those registrations.

Yes, there has been quite a buzz in the trademark community about these vexing trademark specimen and use in commerce requirements (TTABlog, Likelihood of Confusion, and DuetsBlog). Happily, Strafford Publications has assembled a panel of trademark types (Linda, Jonathan, and yours truly) to address these issues in a live webinar on Tuesday January 31, 2017, stay tuned.

In the meantime, if you’d like to attend this webinar free of charge, be one of the first three to post a comment to this blog post. Perhaps you’ll learn how to overcome the pending USPTO specimen of use refusal that Bonobos is currently facing in a USPTO refusal, linked here.

Of course, one of the understandable common desires of a retail clothing store brand owner is to not only own registered service mark rights for its retail store name, but also trademark rights for the clothing and related items sold in its store or stores. And, one of the common desires of shoppers this time of year is to obtain two for one deals.

Leave it to a trademark type to blend the concepts. Life is so much easier for all involved in the trademark registration process when a single specimen of use is able to satisfy both trademark and service mark use; a bogo, killing two birds with one stone, a twofer, you get the idea, right?

Generally, an advertisement that promotes a brand’s retail store services is suitable for demonstrating use of the mark in connection with those services, but the advertisement won’t be appropriate for demonstrating use in connection with the clothing items sold there, unless the advertisement also “includes a photograph of the applied-for mark appearing on the goods or on packaging for the goods.” TMEP 904.04(b).

Armed and legged with that twofer knowledge, would the following floor to ceiling Bonobos advertisement displayed in the Minneapolis skyway system demonstrate both trademark and service mark use (if the full ad were shown along with a close up image of the button — adorned with the Bonobos name  — on the khakis, and trust me, it is fully legible in person)?

BonobosFloorCeiling

Is it still a twofer, if you need to submit two images to the USPTO for the same advertisement?

  • Dan Kelly

    I have admittedly not kept up with the specimen developments, but under previous rules, I wonder if the above billboard lacks a way to immediately purchase the goods and is therefore insufficient.

    • stevebaird

      Hi Dan, the billboard at the top of the post would not work for goods — the mark is not visible on the goods appearing in the image, and as you note, it doesn’t qualify as a point of purchase display associated with the goods, but I’m thinking the billboard advertisement at the bottom of the post should work well for goods(assuming a closer up shot of the button on the khakis is provided to the USPTO) — the reason is, if the advertisement includes an actual photo of the goods bearing the mark, the photo is a good specimen and not disqualified because it is also part of advertising material — so, under those circumstances, there is no need to meet the extra requirements of a point of purchase display associated with the goods in question. Looking forward to your webinar attendance!

  • I’ll take one of the webinar spots. Thanks!

    • stevebaird

      You’ve got it, thanks David!

  • Brian Arndt

    I’ll take that last spot. Happy Holidays!