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[jacob]

I tried to convert my application from a 1b to a 1a by sending in a business card. This was rejected. Can anyone advise me what an acceptable specimen is?

Thanks

[Lyza]

Generally, business cards and letterhead are not considered to be acceptable specimens to prove use of a mark in any class in interstate commerce.

Acceptable specimens are determined by how you are using you mark as evidenced by your goods/services and within what classes they fall.  For example, if your goods are for "computer software" in class 9, an acceptable specimen would be a CD-ROM label or CD-ROM packaging with the mark as filed prominently displayed.  There is really no way here to determine what would be acceptable specimens for your mark without knowing your goods/services and classes filed.

[jacob]

thanks for your response

it is for an online software provider/sales

[Lyza]

thanks for your response

it is for an online software provider/sales

ASP provided computer services usually fall under Class 42 which would require different specimens.  CD-ROM labels will not work in Class 42.  Webpages or brochures that contain specific reference to the services will usually suffice, but even they may not be correct in showing use in interstate commerce.

It would be wise to secure the services of a knowledgeable attorney to review your specimens before you file as a second rejection of incorrect specimens will result in a Final Office Action and you will have only one last chance to get it right or the application will be canceled and you will lose your entire investment to date and your original filing date.

[JSonnabend]

Lyza's response may be correct depending on what you mean by "online software provider/sales".  If you are selling your own branded software, even if done online, that would put you in the world of goods, not services, and a specimen constituting advertising would likely not suffice (POS materials excluded).  If you provide online retail services for software or ASP services (as Lyza understood your response, I believe), then Lyza's guidance is good.

As for Lyza's warnings on final rejections, I don't think she read your post closely enough (or perhaps the title of the post).  An application validly filed under 1(b) won't be cancelled for failure to provide a proper specimen.  Ultimately, it can be abandoned if you don't file an accepted SOU within the proper time after allowance.

You could talk to an attorney about all this, which I recommend, and you could also talk to the Examiner, if you feel up to it.  Often they're hesitant to spend much time with pro se applicants, though.

- Jeff

[Lyza]

Thanks Jeff.

I did digress from the title of this thread but am still unsure, and you probably know the answer, if an ITU application actually will be able to return to normal ITU status and process track after an AAU is filed.  

It was explained to me that after an AAU is filed, the AAU removes the ability for the application to progress through the Statement of Use ("SOU") process.  The AAU and application are forwarded to a Law Office and examiner and the application is then considered to be filed under use-basis and is examined accordingly.  It cannot return to an ITU's Notice of Allowance/SOU process track in the event that the AAU specimens are judged to be inadequate.  To be more specific, an applicant can't arbitrarily say, "ok we thought we had adequate specimens but we don't, and they are currently all we have, so we are going to abandon the AAU and take more time to develop correct specimens by returning the application to the standard ITU's NOA/SOU process track."  That was the basis of my thinking but I'm going to get confirmation of what is correct from the PTO, unless you already know the answer?  Am I ahead of myself?  Thanks.

[JSonnabend]

An applicant can withdraw an amendment to allege use and the application continues as a 1(b).  See TMEP § 1104.10.

- Jeff

[Lyza]

Thanks again Jeff.  Just another reason for me to keep reading the TMEP.  Much appreciated.