What is a trademark specimen of use?
In nearly all cases, a trademark must be tied to a particular product or service. Trademarks do not exist in the abstract. Though a name or logo may be born as a creation of the mind, it cannot remain in the mind to be protectable. You cannot simply claim rights to a name without selling specific goods or services, as if you can block anyone from even saying the name. You must show how the trademark is used in connection with certain goods or services. That is what is meant by trademark specimens of use.
In a typical trademark application, the applicant must submit specimens of use to the USPTO showing how the mark is currently used in the sale of the identified products or services. Trademark specimens of use are subject to very specific USPTO rules. Let’s get familiar with these rules for acceptable trademark specimens.
Need help with trademark specimens of use? Call US patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore how we can help you file proper specimens of use.
When are specimens required by the USPTO?
Specimens of use are required upfront when filing a use-based application filed under Section 1(a). This, of course, makes sense. The applicant of a trademark application based on actual use is declaring that the mark has already been used in selling certain goods or services.
In contrast, specimens are not required in the initial filing of an Intent-To-Use (ITU) application. An ITU application, therefore, provides you with greater flexibility in identifying more goods and services than an application based on actual use. You can subsequently delete goods and services in an ITU application, but you will eventually need to submit evidence of use for those that remain.
In an ITU application, specimens may be submitted either before or after the trademark application is allowed. An Amendment to Allege Use (AAU) is filed before an allowance. After allowance, you would submit a Statement of Use (SOU). Any unused goods or services at the time of filing the evidence of trademark usage must be deleted from the application or divided out under a Request to Divide.
Specimens showing continued use of a mark are also required when maintaining or renewing a trademark registration.
When are specimens of use not required?
Specimens of use would not be required in the initial filing of a US trademark application based on a foreign registration. As a result, a US trademark application based on a foreign registered trademark need not show use in the US.
That being said, the trademark owner ought to commence use promptly after registration. Otherwise, a registration owner would face the risk of challenges to the registration based on non-use.
Goods vs. Services: How do specimen requirements differ?
The USPTO has imposed various rules and guidelines on what constitutes an acceptable specimen of use. Keep in mind that specimens for goods differ from specimens for services.
For goods, advertising and marketing materials are generally unacceptable. Acceptable specimens for goods may include:
- photographs of the product showing the mark directly on the product (e.g., the bottom of a coffee mug)
- product labels and tags showing the mark (e.g., the label on a t-shirt) and affixed to the goods
- photos showing product packaging with the mark clearly displayed. This is particularly relevant to products upon which the mark cannot be placed (e.g., detergent soap packaging)
- webpages showing or describing the product near the mark and with purchasing information (e.g., a webpage showing a photograph of a computer laptop, the mark for the laptop appearing above the photograph, the price appearing below the photograph, and a shopping cart button/link appearing on the page)
- For downloadable software, copies of the instruction manual and screen printouts from (1) web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, (2) the actual program that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program
- product instruction sheets, instruction manuals or other printed matter that are included with the goods [see TMEP Section 904.03(j)]
What are acceptable specimens for a service mark?
For services, specimens must show use of the mark by the applicant in connection with the sale or advertising of services. Acceptable service mark specimens may include:
- advertisements
- marketing materials
- photographs of signage
- webpages
While marketing and advertising materials would generally be unacceptable for goods, they do qualify as specimens for services.
How many specimens do you need to submit?
The USPTO requires only one acceptable specimen of use for each class of goods and services. That being said, the better practice is to submit multiple specimens for each class. That way, you have some fallback options should any particular specimen be unacceptable.
Can I use circle R ® symbol on specimens for a trademark application?
If you’re filing specimens for a pending application, do not use the circle R symbol on specimens. The symbol ® can only be shown with a mark after it has been federally registered with the USPTO. You may use the TM symbol on goods or the SM symbol on services. Of course, specimens for renewing a trademark registration may show the circle R symbol.
If a foreign applicant submits specimens showing the circle R symbol, such specimens might be acceptable if the mark is registered in one of the following foreign countries that recognizes the use of the ® symbol [see TMEP Section 906.01]:
- Belgium
- China
- Costa Rica
- Denmark
- Ecuador
- Germany
- Guatemala
- Hungary
- Luxembourg
- Netherlands
- Nicaragua
- Poland
- Sweden
Will webpages, electronic displays or point-of-sale displays suffice as acceptable trademark specimens?
The general rule is that advertising materials are unacceptable as specimens for goods. Certain displays associated with goods, however, may constitute acceptable specimens [see TMEP 904.03(i)].
Webpages and other electronic displays may be acceptable if they:
- contain a picture or textual description of the goods identified in the trademark application;
- show the mark in association with the goods; and
- provide a means for ordering the goods.
Catalogs might also constitute acceptable specimens for goods if they meet the above conditions. Typically, the missing element in many catalogs and webpages is the ordering information.
An electronic display may fail to show the mark in association with the goods if the location of the mark is distant from the goods. A webpage as a specimen for goods might also be rejected if the mark appears to identify the website (in which case the mark might suffice for retail store services), but not the goods.
Sufficient ordering information may include a shopping bag, shopping cart, add to cart button, or a phone number for placing an order (as opposed to a general phone number for the seller). Email addresses and Contact Us information would generally be insufficient.
Will a crowdfunding campaign serve as an acceptable specimen of use?
A crowdfunding webpage will not suffice as a specimen of use if the goods have not been sold or shipped in US commerce. Raising funds for a project does not arise to use in commerce.
What are USPTO classes of goods and services?
All goods and services eligible for trademark protection are categorized under particular USPTO classes. Altogether, the USPTO has categorized nearly all protectable goods and services under 45 different classes. This classification system helps determine, among other things, whether a mark in one class might be distinguishable from a similar mark in a different class.
Only one acceptable specimen is required for each class. This is true even if, for example, 30 different goods are listed in the same class. Keep in mind, however, that the applicant must still use the mark in connection with all the items identified in that class even though only one specimen needs to be approved.
Mark on specimens must match trademark in application
The mark used on your specimens must match the trademark in your application. This can get tricky where the application is for a word mark, but the specimens show the mark in a stylized logo (i.e., special form). For example, certain letters in the specimen might be depicted by graphical images. This can create complications when the USPTO examining attorney feels that the mark on your specimen does not match the mark as applied for. Another example of unacceptable specimens would be extra words in the specimen that are not included in the mark as applied for.
It would be simpler to have your graphic designer, or whoever is creating your brand, design a logo where the wording is clear and consistent with what you applied for.
What are examples of acceptable trademark specimens of use?
The USPTO has provided this helpful page of acceptable trademark specimens for both goods and services.
Need to file trademark use evidence or respond to a specimen rejection?
We know how to deal with specimen rejections. Contact US patent and trademark attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you submit proper specimens of trademark use.
