The USPTO bounced this specimen. I wonder who agrees or disagrees with the USPTO bouncing this specimen?
The mark is a standard character mark “OPLF”. (Here is the TARR record.) Here are the identified services:
- copyright management
- copyright management consultation
- intellectual property consultation
- intellectual property watch services
- legal services, namely, preparation of applications for trademark registration
- legal services, namely, trademark maintenance services
- legal services, namely, trademark searching and clearance services
- licensing of intellectual property
- patent agent services
- patent and industrial property consultation
- patent licensing
- providing a web site featuring information about patents and patent applications
- providing assistance in the prosecution of trademark applications
- providing information about intellectual and industrial property rights
- trademark watch services
The USPTO has bounced the specimen, saying:
The specimen submitted with the Section 8 Affidavit is unacceptable because it comprises business cards that do not reference the services identified in the registration.
I welcome comments on this. I wonder who agrees with the USPTO that the card does not reference (any of) the services.
Perhaps your stationery does not refer to the relevant services offered because Patent Attorneys offer such a wide range of service. See TMEP 1301.04(a). Sometimes these decisions seem rather arbitrary. However, it is possible to say that some patent attorneys only do prosecution and some only litigation and thus the ambiguity.
Unfortunately, I agree with this analysis. See TMEP1301.04(h)(i), and specifically the MONOGRAM AMERICA case. It is for this reason that I NEVER submit business cards as specimens, opting instead for print-outs from the client’s website. The website generally provides greater detail in support of the identified services.
You may have thought that the terms “patent law firm” and “patent attorney” were indications of the services provided, but I disagree. For example, it may be a firm made up of law professors (who are also patent attorneys) who provide educational courses in the field of patent law. One cannot be sure from the business card alone.
Agreed
It is widely accepted that a composite mark consisting of two arguably descriptive terms can yield an inherently distinctive mark under the anti-dissection rule. Often, one of the terms is required to be disclaimed. It is improper to require disclaimer of all the terms in a registrable mark, however.
Over my many years of practice in this area, I’ve concluded that the decision as to which otherwise descriptive term the examining attorney requires disclaimer is completely arbitrary. This is unfortunate, because resulting registrations disclaiming one term or another are routinely cited by both examining attorneys and applicants, for the limited evidentiary support that they bring to the prosecution process when the same term is the subject of a subsequent application.
I assume that the examining attorney selects for disclaimer requirement the term that is deemed “the most descriptive.” But are there any guidelines about this process? I have not found anything in writing that addresses this point. Can anyone direct me to anything that addresses this issue?
I think your business card specimen does reference a number of the services. The words “patent law firm” and “patent attorney” should cover services like: intellectual property consultation, intellectual property watch services, licensing of intellectual property, patent agent services, patent and industrial property consultation and patent licensing.
Regarding the “patent agent services”, Wikipedia notes that both patent attorneys and patent agents have the same license to practice and represent clients before the United States Patent and Trademark Office (USPTO) – https://en.wikipedia.org/wiki/Patent_attorney#United_States. So a patent attorney can clearly provide “patent agency services” at the USPTO.
See also: In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286 (TTAB 2000) – http://www.uspto.gov/web/offices/com/sol/foia/ttab/other/2000/74657328.pdf – finding a business card and stationery displaying the mark and the word “design” were acceptable specimens of use for applicant’s mark in connection with commercial art “design” services. The TTAB noted that “[w]e do not view TMEP Section 1301.04 as requiring that specimens such as letterhead stationery and the like indicate the specific nature of an applicant’s services” and that “the word ‘design’ alone is sufficient to create in the minds of purchasers an association between the mark and applicant’s commercial art services”).
As noted above, your business card mentions “patent law firm” and “patent attorney”, which should likewise be a sufficient reference to the services themselves, create an association between the mark and the services and/or be a general reference to the trade, industry, or field of use – TMEP 1301.04(h)(i). It’s not like your business card bears only the mark, a company name and address.