Trademark Specimen

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Trademark Specimen

When filing a trademark application, a trademark specimen is required to achieve registration. This is a mandatory part of the process, and if you get it wrong initially you may be forced to abandon the application and start over.

What is a Trademark Specimen?

Prior to a trademark registration being issued, the applicant must show that they’ve used the trademark in commerce. This means it’s been affixed to goods that are transported or sold in commerce, or that services are offered or provided under the trademark. A trademark specimen is the proof of such use that’s included with an application to the USPTO.

A photograph, screen capture, printout or scanned copy showing the use are typical specimens of use.  Before the specimen is approved, it must meet the following requirements for use in commerce:

  • Sales have occurred that directly affect interstate commerce.
  • The trademark specimen must be properly placed (e.g. on promotional displays, the product or a website).
  • Sufficient use has occurred. Token use to meet USPTO requirements is unacceptable.
  • Commercial use must continue. Three years without use is considered trademark abandonment.

There are over 430,000 applications filed with the USPTO yearly to protect brand identifiers. Not all these submissions, however, will include trademark specimens. This is because trademark owners are permitted to file trademark applications on an intent to use basis. This means they have a bona fide intent to utilize their identifier in commerce but have not yet done so.  For intent to use applications, the specimen is submitted when you file your Statement of Use. Extensions can be granted if you need more time to submit the trademark specimen, but for U.S. applicants a trademark specimen must be submitted before a trademark registers.

International applicants or those filing under the Madrid Protocol may not need to provide a specimen prior to registration. They are not required to submit a trademark specimen until the trademark is renewed.

Regardless of how or when you send in such a specimen, you’ll need one example for every trademark class you’re filing under. If your trademark is being used on both clothing and jewelry, for instance, specimens showing use related to both products will be necessary.  This lets the USPTO know that your trademark is being used in commerce to the full extent that you claim.

Trademark Specimen Requirements

There are around 600,000 first office actions issued by USPTO examiners every year, and in many cases, these are linked to applications not meeting trademark specimen requirements. Since affidavits from applicants are often accepted as proof of certain claims, this is the one area where trademark owners must actually prove their commercial use. This results in strict requirements.

Failing to complete your trademark application correctly – including the appropriate specimens – can result in a delayed or refused application. Trademark specimens must:

  • Show a real example of trademark use in commerce (i.e. no printer’s proofs, mockups or altered images).
  • Show use directly related to the goods and services you mention in your application.
  • Match the trademark exactly.
  • Be shown in a way that allows consumers to view it as a source indicator.
  • Include the date and URL address for webpages.
  • Be under 5 megabytes for JPG files, or under 30 megabytes for other files (e.g. PDF, MP3, AVI).
  • Meet other formatting requirements.

When submitting your trademark specimen, it’s best to err on the side of caution. Choose an example that clearly shows legitimate and irrefutable use in commerce. This will make the entire registration process go much smoother.

Trademark Specimen Examples for Goods

Acceptable trademark specimens for goods vary greatly from their service mark counterparts.  For goods, the specimen of use must show the trademark on the products or packaging.  The following are acceptable trademark specimens for goods:

  • Proof of use on actual goods.
  • Tags or labels affixed to goods for apparel.
  • Packaging that features the trademark.
  • Sales displays at point of sale locations.
  • A website that allows placement of the goods in a cart to be purchased.

Nearly 60 percent of all applications for trademark registration are filed for goods. This means the USPTO deals with hundreds of thousands of product specimen samples every year.  If your evidentiary example for goods does not fall under one of these categories and meet all necessary requirements, you will receive an office action requiring you to provide a correct specimen.

Trademark Specimen Examples for Services

For services, the trademark specimen must show the services being offered under the trademark.  So promotional items such as a website are typically the best method for showing commercial use of services.  The following are acceptable trademark specimens for services:

  • A website showing the services being offered.
  • An advertisement offering the services.
  • Signage featuring trademark where services are rendered.
  • Any form of marketing material showcasing the services being offered.

These are a few examples of trademark specimen types, but this list is far from exhaustive. Focus on choosing an evidentiary sample that clearly conveys commercial use, and you may be able to move quickly to the next stage of registration.

Overcoming a Specimen Refusal

There are some instances when your application may be delayed or denied based on the trademark specimen. The following are common reasons for refusal:

  • The applicant provided a mockup rather than an actual specimen showing use.
  • The applicant proved a specimen showing use in relation to the wrong goods or services.
  • The specimen is ornamental in nature.
  • For website printouts the specimen doesn’t show the URL and date.

If your specimen is refused by the USPTO examining trademark attorney, you still have an opportunity to submit a substitute sample provided that it was in use at the time of the filing of the application or statement of use.  If you happen to receive an office action based on a bad trademark specimen, consider the following responses:

Submit a Replacement Specimen

If you failed to provide a proper specimen, your response could be as simple as sending in a better example of use. You must verify that the specimen presented was in use prior to certain USPTO deadlines.  For actual use applications, the specimen must have been in use at the time of filing the application.  For Intent to Use applications, the specimen must have been in use at the time of filing the Statement of Use.

Change of Filing Basis

If the specimen you submit with your trademark application is refused and a better specimen was not in use, you can potentially amend your application to an intent to use basis and then provide the trademark specimen at a later date.

Provide Appropriate Date and URL Information

If you failed to include the date and URL address when you accessed a webpage for a screenshot, you may only need to update your trademark specimen to include this information.

Submit a True Copy of the Specimen

If your trademark specimen was rejected because it was illegible, unreadable or had other issues having to do with completeness, you may just need to submit a new copy of the original specimen. A statement should be included that it’s a true copy of the originally submitted evidentiary sample.

Overcoming an Ornamental Refusal

Ornamental refusals of trademark specimens are slightly different than other rejections. Rather than refusing your specimen because it fails to show appropriate use, an examining attorney will issue these rejections because your trademark serves only a decorative or ornamental purpose. Trademarks must be more than decorative – they need to serve as source indicators for consumers.

The following responses may help if you receive an ornamental refusal:

  • File a verified substitute specimen showing non-ornamental use. For apparel this means on a label or hand tag.
  • Amend your application to the Supplemental Register.
  • Submit any proof that the design has acquired distinctiveness in the minds of consumers.
  • Change your application to Intent to Use.

Everyday expressions, famous quotes, and certain designs may be viewed as ornamental rather than indicative of a source. You’ll need to provide sufficient evidence that your trademark is being used in commerce as a way to distinguish between brands.

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If you have a question related to a trademark specimen, we can assist.  Please contact us today.

 

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