What Qualifies as a Trademark Specimen?
Whether you file a US trademark application on Intent-to-Use basis or whether it is already in use, one of the requirements you eventually will have to provide is a specimen proving use. But what is a specimen, and how should you pick one to maximize the chances for a successful registration? These are just a few of the important and frustrating questions that a first time trademark applicant is faced with. The answer can be elusive, especially if you have decided to file on your own, without the existence of an experienced trademark attorney. The process does not need to be difficult. If you understand the concepts and the rules, it is much easier to make an appropriate selection of a specimen. As always with the trademark process, enlisting the aid of an experienced trademark practiioner attorney can be a very wise investment. This article will attempt to give an introduction into what can qualify as a specimen for a US trademark application.
What is a Specimen?
In the most simplest sense, a Specimen (in regard to a trademark) is some form of proof that demonstrates that you are using the sought trademark in connection with the goods and/or services for which you are seeking protection via a US trademark application. Regardless of whether you are proceeding on an "already in use" or "intent-to-use" basis, you must provide the USPTO with a suitable specimen before you attain registration. The only difference is at which stage in the process you have to provide a specimen. Among other things, the specimen must be accompanied with a sworn declaration signed by the owner (or designated agent of the owner with knowledge of the use) certifiyng that it is in use and true.
For an "already in use" application, you will need to provide the specimen and accompanying declaration along with your initial trademark application. For a trademark application that is proceeding on the basis of a bonafide "intent-to-use" the trademark in the future, you will need to provide a specimen and the accompanying declaration at some later point in the application process, either as part of an Amendment to Allege Use (AAU) or a Statement of Use (SOU). A Statement of Use is filed after you have received a Notice of Allowance, whereas an Amendment to Allege Use can be filed at several stages of the process before publication.
Appropriate Specimens will Vary
The type and form of specimens that you can present will depend on what you seek to protect via the trademark application. Different specimens are acceptable for different goods and services, and specimens that are acceptable for services will differ from those acceptable for goods. If your application is seeking protection for a variety of goods/services, you will need to provide multiple specimens demonstating use of the trademark for each.
Knowing what constitutes an acceptable specimen for either a good or a service is an important starting point in the process of selecting what to submit to the USPTO. The acceptance of a specimen is a legal determination, so again, the assistance of a trademark attorney will be of great help to you.
Specimens for Goods
Appropriate specimens for goods are intended to provide real-world proof that you have commenced to use the trademark in question in commerce, associated with the goods that are listed in your trademark application.
Adequate specimens that can be submitted for goods can include any of the following items: tags, labels, containers, photographs that show the mark on the actual goods or packaging, and/or displays associated with the actual goods at their point of sale. For any tags and labels, please note that the tags/labels must show indicia of commerce, including items like a UPC, net weight or other elements of commercial use. If you choose a shipping container or other outer container, we must also show the product with the shipping container. In certain circumstances, a screenshot of a website (again, it is crucial that it demonstrates the goods at their point of sale) can qualify. So, the screenshot must have "add to cart" or "buy now" or something similar to demonstrate that the usage is tied to a point of sale.
Specimens for Services
For services, a specimen is intended to show how the trademark is used in the real business with your current services, which links the trademark to the provision of the services listed in your trademark application.
Adequate specimens of use for services can include advertising and marketing materials, brochures, business cards, photographs of business signage/billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. The mark must be prominently displayed in connection with the precise services for which we applied.
Common Specimen Problems to Avoid
The USPTO Trademark Office can issue an Office Action refusing a proffered specimen. Indeed, the USPTO often rejects specimens for a variety of reasons (this is yet another reason why a trademark attorney is a sound investment). Here is a rundown of some of the most common specimen problems that you should try to avoid.
- PRINTER PROOFS AND MOCK UPS - Printer's proofs and product mock ups (as well as anything generated by AI) will not qualify as appropriate specimens.
- "COMING SOON" - Recalling that the specimen is supposed to show that you have commenced use of the trademark in commerce, anything that implies that your use in commerce has not yet occurred will cause a rejection.
- Merely a Drawing - Submitting just a picture or drawing of your trademark (without any goods/services depicted) will be rejected.
- Fake Specimens - Specimen farms online providing bogus specimens or stock images will not satisfy the USPTO.
- Webpage specimens without URL and date - If you are submitting a screenshot of a webpage, make sure either the screenshot itself or the application lists the date taken and the URL, or the specimen will be rejected.
- Not Associated with the Goods/Services - Your specimen must show the applied-for trademark used with the specific goods or services listed in your application; anything else will be rejected.
- Mere Advertising material - Remember, displays must demonstrate the point of sale!
- Specimen doesn't match drawing - the trademark as shown in the specimen must match what you have in the application!
- Merely Ornamental - the use of the trademark is decorative, and not acting as a source identifier
There are a variety of other problems that can arise. While an Office Action refusal of a specimen can be fixed/cured, you have to follow certain rules and have a short time frame. Thus, it is always best to seek out a qualified trademark attorney to assist you, if you have received a specimen refusal.
Avoiding these common mistakes when submitting your trademark specimens can help maximize the chances of a successful trademark application. Always ensure your specimens accurately depict how your trademark is really/actually used in commerce, directly associate the trademark with your goods or services, and demonstrate the trademark functioning as a source identifier. If you have any questions or need assistance with your trademark application, our experienced team is here to help you. Though we are Chicago Trademark Attorneys - our trademark practice is Global! We regularly assist clients across the United States and in other countries with the trademark registration process.
Contact our office today to seek an initial consultation to discuss your trademark specimen questions, and we will steer you in the right direction!
