A recent appeal of a trademark application refusal shows the importance of filing proper specimens of use.

The matter, In Re Sciton, Inc., was an appeal filed by the owner of two applications to register the mark SCITON (in standard characters and composite design mark form) for various medical services related to cosmetic skin treatments and procedures.  The appeal was heard before the U.S. Trademark Trial and Appeal Board.

The Examining Attorney rejected both specimens for the mark on the grounds that the specimens did not “show a direct association between the applied-for mark and the services in the application.”   Applicant filed two specimens with each of its applications: (1)  a white paper entitled “Laser-Assisted Lipolysis Using ProLipo PLUS™,” by plastic surgeon Marc J. Salzman; and (2) a printout from the “Treatments” section of its website at sciton.com.

USPTO practice states that service mark specimens must show use of the mark in connection with the applied for services.  This requires that potential purchasers would perceive the mark to identify the applicant’s services as well as the Applicant as the source via a direct association.   A specimen that merely shows the mark alone without reference or association to the services is unacceptable.  This is true even if the mark and a reference to the services appear in the same specimen..  What is critical is for the mark to be used to identify  both the services and Applicant as the source of the services.

In this case, the Board found that while both specimens showed the subject SCITON Marks, neither specimen indicated that the Applicant provided any medical or cosmetic services itself.  Instead, the specimens reflected that the Applicant is a medical device company that furnishes devices to doctors.  Put simply, the Applicant’s services for which it applied did not reflect the Applicant’s actual business.  Here, if the Applicant applied for medical device goods and submitted a proper specimen that showed the mark being used in association with the goods, then a trademark registration would have most likely issued.   But it did not.  As the Board succinctly concluded:

“there is nothing on any specimen that refers to, or even suggests, that there is a SCITON medical/cosmetic service.”

The refusal to register the SCITON Marks due to the fact that the specimens failed to show a direct association between either form of the Mark and the services identified in the trademark application was affirmed,

Editor’s Note:  Applicant’s need to accurately identify its goods or services .  The proper time to do so is in conjunction with preparing and filing the trademark application.  A helpful list of trademark classification of healthcare goods and services may be found in our article here.