A Trademark Use in Commerce Story: Bonobos Buzz and a Two for One Specimen?

by Winthrop & Weinstine, P.A.
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There are at least two kinds of buzz converging at the moment (perhaps three), especially for fashion forward and fit oriented trademark types here in Minneapolis.

On the one hand, with the holidays upon us it’s hard to avoid the barrage of billboard ads in the Minneapolis skyway promoting the first brick and mortar entry of Bonobos into the Minnesota marketplace, strategically located in the buzzing North Loop neighborhood of Minneapolis:

BonobosBillboard

On the other hand (or pant leg), are the increasingly vexing trademark specimen of use and Lanham Act use in commerce requirements administered by the USPTO that limit how a brand owner is able to properly demonstrate evidence of use that will effectively support trademark and service mark registration and the ongoing maintenance of those registrations.

Yes, there has been quite a buzz in the trademark community about these vexing trademark specimen and use in commerce requirements (TTABlog, Likelihood of Confusion, and DuetsBlog). Happily, Strafford Publications has assembled a panel of trademark types (Linda, Jonathan, and yours truly) to address these issues in a live webinar on Tuesday January 31, 2017, stay tuned.

In the meantime, if you’d like to attend this webinar free of charge, be one of the first three to post a comment to this blog post. Perhaps you’ll learn how to overcome the pending USPTO specimen of use refusal that Bonobos is currently facing in a USPTO refusal, linked here.

Of course, one of the understandable common desires of a retail clothing store brand owner is to not only own registered service mark rights for its retail store name, but also trademark rights for the clothing and related items sold in its store or stores. And, one of the common desires of shoppers this time of year is to obtain two for one deals.

Leave it to a trademark type to blend the concepts. Life is so much easier for all involved in the trademark registration process when a single specimen of use is able to satisfy both trademark and service mark use; a bogo, killing two birds with one stone, a twofer, you get the idea, right?

Generally, an advertisement that promotes a brand’s retail store services is suitable for demonstrating use of the mark in connection with those services, but the advertisement won’t be appropriate for demonstrating use in connection with the clothing items sold there, unless the advertisement also “ includes a photograph of the applied-for mark appearing on the goods or on packaging for the goods.” TMEP 904.04(b).

Armed and legged with that twofer knowledge, would the following floor to ceiling Bonobos advertisement displayed in the Minneapolis skyway system demonstrate both trademark and service mark use (if the full ad were shown along with a close up image of the button — adorned with the Bonobos name  — on the khakis, and trust me, it is fully legible in person)?

BonobosFloorCeiling

Is it still a twofer, if you need to submit two images to the USPTO for the same advertisement?

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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