[E-trademarks] Trade Show booth as specimen

Fri Dec 15 20:29:49 EST 2023

Regarding #2, I have successfully submitted photo(s) showing the goods
inside/around the booth when the booth bears the mark.  Depending upon the
booth layout and good, I sometimes have to submit a few pictures.  The
first is a wide-angle shot that captures both the mark and good in the same
frame, followed by additional narrow-angle detailed shots showing the mark
and good individually.

Also, if sales literature near the product bears the mark, then a picture
showing the literature by the good should be a sufficient specimen.  At
most, you would also have to submit a copy of the literature and a picture
of the good if it is hard to make out all of the details in the first
picture.

Thanks,

John

On Wed, Dec 13, 2023 at 8:05 PM carla calcagno via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Based on this email string, there appear to be three different scenarios
> here;
>
> 1. Advertising your *own services* at a trade show ( e.g. ABC accounting
> or financial sponsorship of races).  No point-of-sale display is required.
> 2. Advertising your *own goods* ( e.g tires)  at a  trade
> show,  without the branded tire or a photo of the branded tire  at the
> trade show, and only relying on a photo of the booth with the mark, but not
> an opportunity for consumers to purchase goods through the show. The cases
> of which I am aware require that point of sale display exists for the
> specimens showing the sale of one's own goods.
> 3. Promoting the *goods of another* at a trade show - This is a service
> and no point of sale display issue arises.
>
> I think the TMEP Section previously referred to and the cases cited there
> are pretty clear as to what the USPTO may expect. The issue is getting the
> Examiners to understand what you are submitting and how it fits within the
> case law.
>
> On Wed, Dec 13, 2023 at 6:48 PM Crane, Susan via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
>> In which case you simply need to explain that in the description of the
>> specimen (or response to office action), because in context, the connection
>> of the mark to the services would be clear to the consumer.
>>
>>
>>
>> *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 *Scott Landsbaum via E-trademarks
>> *Sent:* Wednesday, December 13, 2023 6:41 PM
>> *To:* For trademark practitioners. This is not for laypersons to seek
>> legal advice. <e-trademarks at oppedahl-lists.com>
>> *Cc:* Scott Landsbaum <scott at scottlandsbaum.com>
>> *Subject:* Re: [E-trademarks] Trade Show booth as specimen
>>
>>
>>
>> I'm wondering a little bit what the photo actually shows. A lot of
>> tradeshow booths are the company name and a few people hanging around but
>> no explicit text on the booth banner explaining what the company does. If
>> you're at an accounting
>>
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>>
>> I'm wondering a little bit what the photo actually shows. A lot of
>> tradeshow booths are the company name and a few people hanging around but
>> no explicit text on the booth banner explaining what the company does.  If
>> you're at an accounting show and the booth says ABC & Co., you wouldn't
>> know from the picture that ABC & Co. is an accounting firm.
>>
>>
>>
>> Regards,
>>
>> Scott
>>
>> Winter Closure: Dec. 25 - Jan. 1
>>
>> Scott Landsbaum, Inc.
>>
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>> On Wed, Dec 13, 2023 at 3:35 PM Crane, Susan via E-trademarks <
>> e-trademarks at oppedahl-lists.com> wrote:
>>
>> That shouldn’t be necessary.  If the mark is used to promote others
>> goods, attending a trade show where you were promoting those goods, whether
>> they could be ordered onsite or not, is still providing the service.  It is
>> not akin to point of purchase displays.
>>
>>
>>
>> *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 *voyer--- via E-trademarks
>> *Sent:* Wednesday, December 13, 2023 3:56 PM
>> *To:* Oppedahl Carl <e-trademarks at oppedahl-lists.com>
>> *Cc:* voyer at keganlaw.com <daniel at keganlaw.com>
>> *Subject:* Re: [E-trademarks] Trade Show booth as specimen
>>
>>
>>
>> Can Applicant’s authorized representative certify personal knowledge that
>> the photo accurately represents the reality including the date it was
>> takenn; and also certify that there was an ordering mechanism at the trade
>> show— parallel to what
>>
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>>
>>
>> ZjQcmQRYFpfptBannerEnd
>>
>> Can Applicant’s authorized representative certify personal knowledge that
>> the photo accurately represents
>>
>> the reality including the date it was takenn; and also certify that there
>> was an ordering mechanism at the
>>
>> trade show— parallel to what a web sitte needs to have for goods, to be
>> more than just advertising?
>>
>>
>>
>>
>>
>> Daniel Kegan *  <daniel at keganlaw.com>
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>>
>> On Dec 13, 2023, at 2:29 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
>>
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