When I submitted my specimen for my trademark (word mark), the specimen did show the mark being used. However, the same specimen showed use of another name that my product also goes by. In essence, my product had a more popular name that I was planning on eventually phasing out while introducing the new name. Later on, if someone was to look at my proof of specimen, would my registered mark be vulnerable to cancellation. If so, on what grounds. Please help. The old mark is much more apparent on the specimen as well. Doesn't the fact that my mark was printed on the product prove it was being used in reference to the goods under my class (showing use of the mark in commerce)?
A product can have multiple names and so long as the specimen shows the mark on the product clearly, and it's not photoshopped, and so long as it's the same as in the application you should be fine.
If the mark isn't clear enough or is confusing, or if the examiner thinks it's a fake, you'll get an action letter from the Trademark office about it. Otherwise there should be no problem and that would not be grounds for cancellation.
You don't tug on Superman's cape; you don't spit into the wind; you don't pull the mask off the old Lone Ranger; And you don't get legal advice from a free Q&A page on the Internet. The above is a general statement of the law or just my opinion. I am not saying whether it applies to your situation or not because I don't know the details and youâ€™ve not hired me as your attorney.
My analysis is that two marks appearing on one item are not "fraud" and does not run the risk of one of the marks being cancelled on that basis. I represented 300 Italian jewelry manufacturers. Half had word or logo trademarks. All, however, had an identification mark issued by the Italian mint (for items in precious metal.) Those identification marks were registered as US trademarks. None of the approx. 150 applicants who showed two marks on a single piece of jewelry was ever cancelled.
The above is general legal and business analysis. It is not "legal advise" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.
It is okay to use multiple trademarks on a single product. The same specimen can be used for each such trademark and is perfectly acceptable.
Cancelling a trademark registration for fraud is now a difficult thing to do. The petitioner would have to show that you had a specific intent to commit fraud against the Trademark Office.
Assuming that your specimen shows the mark being used on the product (in the desired class of goods) as a source indicator, that should be sufficient. Having additional marks on the specimen is not a disqualification or fraud. There are many examples of multiple marks on a product. For example, PepsiCo owns trademark registrations for "CODE RED," "MOUNTAIN DEW" and "MOUNTAIN DEW CODE RED." The fact that the product may contain both "CODE RED" and "MOUNTAIN DEW" does not necessarily mean that the words CODE RED do not function as a source indicator.
However, for your piece of mind, and to help avoid any other possible problems, you should retain a trademark attorney to help with your application. Good luck.
This answer is for informational purposes only. It is not intended as specific legal advice regarding your question. The answer could be different if all of the facts were known. This answer does not establish an attorney-client relationship.
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