[E-trademarks] Trade Show booth as specimen

Wed Dec 13 19:19:42 EST 2023

 Yes, try explaining to an Examiner that all those ads they see on
billboards around a race denote financial sponsorship of racing events. I
feel your pain!

On Wed, Dec 13, 2023 at 6:38 PM Crane, Susan <susan.crane at wyndham.com>
wrote:

> Carla,
>
>
>
> The number of idiotic refusals I have gotten to service mark specimens
> over the years just gets me very frustrated.  All examiners seem to
> understand is advertising.  If it isn’t advertising, they don’t get it.
>
>
>
> *Susan L. Crane*
>
> *Group Vice President, Legal*
>
> *Intellectual Property, Brands & Marketing*
>
>
>
> Wyndham Hotels & Resorts, Inc.
>
> 22 Sylvan Way
>
> Parsippany, NJ 07054
>
> *O* (973) 753-6455
>
> *M* (973) 879-3420
>
> Susan.Crane at wyndham.com
>
>
>
>
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *carla calcagno via E-trademarks
> *Sent:* Wednesday, December 13, 2023 6:33 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* carla calcagno <cccalcagno at gmail.com>
> *Subject:* Re: [E-trademarks] Trade Show booth as specimen
>
>
>
> Good Luck Janet! Susan - FYI - I agree with you as to the source of the
> photo - just explaining my experience, similar to Janet's. This also
> happens when I have a car company client whose cars at a trade show are
> photographed by a third-party
>
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> Good Luck Janet!  Susan - FYI - I agree with you as to the source of the
> photo - just explaining my experience, similar to Janet's. This also
> happens when I have a car company client whose cars at a trade show are
> photographed by a third-party digital magazine. If you give the Examiner an
> URL link from the magazine to the page where a shot of the car sits at the
> trade show, or a third party has a shot of your client advertising its
> services  at the trade show,  the examiner likely will issue you a
> rejection.
>
>
>
> It is a pain!
>
>
>
> On Wed, Dec 13, 2023 at 6:24 PM Janet Satterthwaite via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
> The context was helpful. So I submitted all of it .
>
> I will let you know how I get on thx
>
> Sent from my iPhone
>
>
>
> On Dec 13, 2023, at 5:46 PM, Crane, Susan via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
> 
>
> *WARNING:* External email, do not click on links or open attachments
> unless you recognize the sender’s full email address and expect the
> attachments.
>
> Carla,
>
>
>
> This is why I would have just submitted the photo on its own, and not the
> website page it was taken from.  A photo of the services being rendered
> should not depend on the source of the photo for its acceptability.  The
> trade show booth is the trade show booth, no matter who took a picture of
> it.  Yet another example of examiners not understanding the difference in
> specimens for goods vs. services, IMNSHO.
>
>
>
> Getting off my soap box.
>
>
>
> *Susan L. Crane*
>
> *Group Vice President, Legal*
>
> *Intellectual Property, Brands & Marketing*
>
>
>
> Wyndham Hotels & Resorts, Inc.
>
> 22 Sylvan Way
>
> Parsippany, NJ 07054
>
> *O* (973) 753-6455
>
> *M* (973) 879-3420
>
> Susan.Crane at wyndham.com
>
>
>
>
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *carla calcagno via E-trademarks
> *Sent:* Wednesday, December 13, 2023 5:24 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* carla calcagno <cccalcagno at gmail.com>
> *Subject:* Re: [E-trademarks] Trade Show booth as specimen
>
>
>
> Hi Janet In my experience, the Examiners won't take "third party" shots of
> your advertising for services or displays associated with the goods. So I
> would have submitted your client's own picture of the trade show booth.
> Apart
>
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>
> Hi Janet
>
>
>
>  In my experience, the Examiners won't take "third party" shots of your
> advertising for services or displays associated with the goods. So I would
> have submitted your client's own picture of the trade show booth.
>
>
>
> Apart from that the key issue for goods specimens is whether the trade
> show is considered a point-of-sale display.  See,  TMEP 904.03(g). In at
> least one case that I have not read in ages, flyers shown at a trade show
> were considered displays associated with the goods and thus considered
> acceptable as specimens.*In re Ancha Elecs. Inc.*, 1 USPQ2d 1318 (TTAB
> 1986) (holding that a photograph showing an informational flyer or leaflet
> clearly depicting the mark and presented on the goods at a trade show
> exhibit was an acceptable display associated with the goods). But read this
> section, the USPTO will require you to jump through additional hoops when
> you file these types of specimens to show that these trade shows are
> point-of-sale displays for goods and not mere advertising.
>
>
>
> I note that you sometimes say goods and sometimes say services in the
> email.  If the specimens were for services, they should have been accepted,
> without more, in my opinion, so long as the specimens were your own
> client's photos.
>
>
>
> Good Luck!
>
>
>
> Carla Calcagno
>
>
>
>
>
>
>
>
>
> On Wed, Dec 13, 2023 at 2:32 PM Janet Satterthwaite via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
> Hello brain trust
>
>
>
> We filed a use-based application for MARK for sales and marketing of
> [consumer goods].
>
>
>
> The specimen was the mark prominently displayed on client's booth at an
> industry trade show.
>
>
>
> The photo of the booth was from an industry blog.
>
>
>
> The specimen has been refused, first, b/c the photo was in a third party
> blog (so???);
>
>
>
> and second, because it does not show a direct association between the mark
> and the services.
>
>
>
> How can that be? A booth at a trade show can only be for the purpose of
> sales and marketing of the goods. Moreover, the blog post described how the
> goods were displayed at the booth.
>
>
>
> Has anyone encountered this before, before I dive in to the research?
>
>
>
> thx
>
>
>
> Janet
>
>
>
> *Janet F. Satterthwaite*|Partner/ Chair, Trademark Practice|Potomac Law
> Group, PLLC
>
> 1717 Pennsylvania Avenue, NW, Suite 1025
>
> Washington, D.C. 20006
>
> jsatterthwaite at potomaclaw.com|www.potomaclaw.com
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