What evidence proves that I am using a trademark? IN RE FINLISTICS SOLUTIONS CORP

What evidence proves that I am using a trademark? IN RE FINLISTICS SOLUTIONS CORP

A trademark is something a producer of a product uses to brand its products so that consumers can distinguish the producers goods from goods of competitors.  Traditionally a trademark is thought of as a simple symbol, word or short phrase, however anything that is used to let consumers know who produced a product can be eligible for trademark protection.  In the United States the first person to use a trademark in commerce is considered the senior user of a trademark.  People that use the same or a similar trademark after the senior user are considered junior users.  If a junior user uses a trademark in a way that leads to consumer confuse the junior user’s products with the senior users products, that can be considered trademark infringement.

Registering a trademark is an important way that a trademark user can strength their right to a trademark, however registration of a trademark is not necessary for a trademark owner to begin using a trademark commerce or to be granted some rights to a trademark.

If a trademark owner decides that they want to register their trademark in the United States the registration process is relatively easy to understand.  Generally speaking, if a trademark application identifies the products the trademark will be used on, demonstrates that a trademark is distinctive and “in use” in commerce than the application will be granted relatively quickly.  When the trademark application is to vague on one of these points, it can be an up hill battle to get the trademark application granted by the United States Patent and Trademark Office.  That is why there are attorneys that specialize in trademark law.  Attorneys that specialize in trademark law help their clients prepare a trademark application that will most likely be granted.

IN RE FINLISTICS SOLUTIONS CORP, Serial No. 87722652 (TTAB 2020) is a case which illustrates the difficulties a trademark applicant can face when their application is too vague.  The applicant in this case wanted to register the trademark FINLISTICS CLIENTIQ for “Business development consulting services, namely, providing temporary use of non-downloadable software for analyzing, calculating, measuring, modeling, and forecasting business and financial performance,” in International Class 42.   As evidence of use in commerce the applicant submitted a screen shot of a webpage which displayed the trademark.  The Examining Attorney refused registration under Sections 1 and 45, 15 U.S.C. §§1051, 1127, because the specimen submitted to demonstrate use in commerce did not show a direct association between the  applied-for mark and the services associated with International Class 42.

The applicant responded to this refusal by arguing that confusion was not likely, but did not submit new a new specimen to demonstrate use in commerce. Because the applicant did not submit a new specimen, the examining attorney issued a final likelihood of confusion refusal under Section 2(d).  The applicant appealed to the Trademark Trial and Appeal Board.

The Trademark Trial and Appeal Board dismissed the appeal due to Applicant’s complete failure to respond to the
specimen refusal.  The Board noted that the applicant had 4 opportunities to respond to the specimen refusal but failed to do so.  For the sake of completeness the Board reviewed why the specimen was inadequate.

To constitute a valid specimen, the item must clearly show use of the mark in the “sale or advertising” of at least some of the services identified in the application. Such use may be established by: (1) showing the mark used or displayed as a service mark in the sale of the services, which includes use in the course of rendering or performing the services, or (2) showing the mark used or displayed as a service mark in advertising the services, which encompasses marketing and promotional materials.

The Board found that the specimen submitted by the applicant was too vague to show a direct connection between the FINLISTICS CLIENTIQ mark and the services identified in the application.  Put simply the specimen didn’t name any of the services for which the application was filed.

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