I folded on the specimen rejection

olf-specimenReaders will recall my posting on July 21 in which I complained about the USPTO’s post-registration division bouncing a specimen in the renewal of my own trademark registration.  I was trying to do an 8-and-15 for my mark “OPLF”.  The services were all drawn from the ID Manual, and it seemed to me that the words “Patent Attorney” on the card made clear that I was providing patent attorney services.  But that’s not how post-reg saw it.  The way they saw it, the business card supposedly failed to “reference” the services.  They bounced the specimen.

I wish I had the time and the energy to fight back each time I think the USPTO gets something wrong.  But on this one I folded.  I took the card that I had sent in before as a specimen (which post-reg bounced), and hand-wrote the words “we provide patent agent services” on the card.  I sent it in again.  (You can see the new specimen above.)  Fifteen days later, post-reg accepted the specimen.  Yes, because I folded, the registration remains in force for another four years, and it is now incontestable.

Just to be on the safe side, I will be sure to hand out one or two cards with such a handwritten message in the next week or two.

I guess there is a practice tip lurking in this recent exchange with the USPTO.  If you are working on a renewal and the client offers up a business card as a proposed specimen that ought to be good enough but is at risk of being bounced like my card was, just ask the client to hand-write some of the services on the card.  And I guess tell the client to be sure to hand out one or two such hand-annotated cards to real people.

2 Replies to “I folded on the specimen rejection”

  1. Glad I’m not the only one having difficulties with specimens being bounced.

    We have a case where the services were the retail and whole-sale of heaters, via direct solicitation by a sales person. After a first rejection of a specimen (a brochure), we submitted 10 further specimens (including a business card and photos of the sales person at attendance at trade shows standing in front of the heaters, showing the mark next to the heaters and talking to a potential customer). We hoped that one of them would stick, but nope. Examiner refuses the specimens either: (i) because they are associated with heaters or (ii) because they are not associated with heaters. What?! So the mark must be associated with, but at the same time cannot be associated with, the goods that are subject of the sale services?

    Maybe we’ll try writing on the business card, like you did.

  2. For me, this creates more questions than answers. I’m really surprised that the examining attorney accepted this hand-written, modified business card as a proper specimen. I would have thought the examining attorney would have called into question whether the specimen submitted was/is truly “used in the normal course of trade.”

    I’m also wondering why an alternate specimen wasn’t submitted, e.g., a screen shot from the website. Such a screen shot seems to me to be a more compliant specimen and it would have been just as easy to submit.

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