Trademark Specimens of Use

What are Acceptable Trademark Specimens of Use?

Prior to applying for a trademark or service mark registration, it is crucial to understand the specimen requirements set forth by the United States Patent and Trademark Office (USPTO). A specimen is evidence demonstrating the actual use of a trademark or service mark in commerce concerning the goods and services listed in a trademark application or registration. This article explains the rules and guidelines for acceptable trademark specimens.

General Requirements for Specimens of Use

There are two different types of trademark applications based on whether the mark is being used at the time the application is filed. There are trademark applications under Section 1(a) of the Lanham Act for marks that are in use at the time of the application, and there are intent-to-use (ITU) applications under Section 1(b) for marks that are not in use at the time of filing, but for which the applicant has a bona fide intent to use the mark in commerce. For applications based on current "use in commerce", applicants must submit a specimen at the time the application is filed.

An ITU trademark application allows an applicant to secure priority in a trademark or service mark before it is actually used in commerce. The applicant must demonstrate a "bona fide intent" to use the mark in commerce in the near future. This genuine intention must be supported by evidence, such as business plans, marketing materials, or product prototypes. When filing an ITU application with the USPTO, the applicant must submit a completed application identifying the mark and the goods and services with which the mark will be used, and a declaration that the applicant has a bona fide intent to use the mark in commerce. Once the application is approved, the applicant must file a Statement of Use (SOU) or a request for an extension of time to file the SOU within six months. The SOU includes proof that the mark is being used in commerce, such as labels, packaging, or advertisements displaying the mark (e.g., a business card, online advertising examples, a website printout, or other appropriate specimen).

In some cases, a US trademark application may be filed claiming priority to a foreign registration or application filed under the Madrid Protocol. In such cases, a specimen is not required prior issuance of a federal registration. Such applications only require a statement of use in commerce between the 5th and 6th year after registration (Section 8 or 71 Declaration of Continued Use) and every ten years thereafter for renewal.

When a specimen submission is required, the applicant must submit one specimen for each class of goods or services in the application or registration.

Specimen Requirements

The USPTO has specific rules and guidelines on what constitutes an acceptable specimen. As of February 15, 2020, these rules have been updated to align with statutory requirements and precedential case law. Key requirements for acceptable trademark specimens include:

1. Actual Use: The specimen must be a real example of how the trademark is actually used in commerce, not a mock-up, printer's proof, digitally altered image, or draft. It should show the trademark used in association with the goods or services listed in the application.
2. Direct Association: The specimen must show a direct association between the trademark and the goods or services. For goods, this can be on the product, packaging, labels, or tags. For services, it can be in advertisements or during the performance of the service.
3. Source Indicator: The trademark must be used in a way that consumers perceive it as a source indicator for the goods or services.
4. URL and Access Date: If the specimen is a webpage, it must include the URL and the date it was accessed or printed. In the case of goods, a webpage specimen is only appropriate if the webpage is acting as a point of sale (POS) for the goods listed in the application, with goods on offer, the purchasing information (e.g., price, sizes, etc.), and the ability to make the purchase through the webpage. The webpage must essentially be an online store for the goods.

Examples of an Acceptable Specimen for Trademark or Service mark

Trademark Specimen:

• The Goods Themselves: A photo showing the trademark on the product, such as a coffee mug or software instruction manual.
• Labels and Tags: A photo of a label sewn into a t-shirt or attached to the product. Labels or tags not physically attached may be accepted if they clearly show the mark in use in commerce, including typical informational matter like UPC barcodes or ingredient lists.
• Advertising Material: Advertising and other promotional material is generally not an acceptable specimen for goods.

Specimens for Trademark Applications listing goods

Acceptable specimens must show the mark used on goods, their containers, packaging, labels, tags, or associated displays, which must be point-of-sale in nature. Examples of acceptable specimens include clear and legible photocopies, photographs, web page printouts (with URL and date), or similar reproductions of actual use. Specimens cannot be artist renderings, proofs, illustrations, or computer mockups. The specimen must display the mark directly associated with the goods, showing use in commerce. If impractical to place the mark directly on goods or packaging, the USPTO may accept other documents related to the sale of the goods.

Labels or tags attached to goods are acceptable, provided they show the mark as a source indicator. Shipping labels may be accepted if they are affixed to goods and show proper trademark use, not just as a trade name (e.g., a return address). Labels or tags must include typical information like net weight or UPC codes. Stamping the trademark on goods, containers, or tags is acceptable, and photographs or web page printouts showing the stamping are valid specimens.

Commercial packaging that normally accompanies the goods is also acceptable. For digital goods like software, movies, or audio recordings, screenshots or photos showing the trademark on the display are valid, provided there is a way to download or purchase the goods. Specimens must include the URL and access or print date for web page printouts to verify their authenticity. Specimens before February 15, 2020, are grandfathered under prior rules unless certain conditions apply.

Service Mark Specimen:

• Advertising Materials: Brochures, flyers, or website printouts that show the service mark used in marketing the services.
• Business Signs: Photos of signs displaying the service mark at a business location.
• Webpage Showing: Screenshots of a webpage with the service mark and service details.

Specimens for Service Marks must be in association with offered services

Generally, to serves as proper specimens, business signs must be in association with the services listed in service mark applications. In a case involving Republic National LLC's service mark application (Ser. No. 86513101) to register the mark REPUBLIC NATIONAL for various real estate services, the Board affirmed the refusal due to insufficient specimens for services. The applicant submitted photographs of their facility's front door with the REPUBLIC NATIONAL mark. The Board emphasized that a specimen must show a direct association between the mark and the services listed in the service mark application. Although the mark need not explicitly mention the services, it must be used in rendering those services.

The front door displaying the REPUBLIC NATIONAL mark did not reference the real estate services offered, failing to establish a direct association. The Board noted that the front door, merely bearing the mark, did not associate the provision of services like real estate investment, acquisition, banking, financing, or development. Instead, it functioned more like an advertisement and lacked reference to the services.

The Board contrasted this with the case of In re Metriplex (23 USPQ2d 1315, 1316 (TTAB 1992)), where a computer screen displaying the mark during the provision of data transmission services was accepted because the services were provided through a tangible item (the computer terminal), and the mark was shown in use. In contrast, Republic National's front door only served as an advertisement without indicating the services provided.

Unacceptable Specimens

Specimens that are deemed unacceptable by the USPTO include:

• Mock-Ups or Drafts: Mockup specimens, whether digital or non-digital, are also inadequate as they depict potential rather than real trademark usage.
• Digitally Altered Images: These do not represent how the trademark is used in reality. A digitally created or altered specimen, such as a digital drawing or altered image of goods, does not suffice because it does not show proper use of the mark.
• Press Releases: Unless they are consumer-facing and show the trademark used in connection with goods or services.
• Altered Images or Non-Use Evidence: These fail to demonstrate the trademark's use in commerce as required by federal law.In assessing improper trademark specimens, certain materials are deemed unsuitable. Key regulations, including 37 C.F.R. §§2.51 and 2.56(c), state that drawings, photocopies, artist renderings, printer's proofs, computer illustrations, digital images, or mockups do not qualify as valid specimens. These items fail to demonstrate use of the trademark in commerce, as mandated by Sections 1 and 45 of the Lanham Act (15 U.S.C. §§1051, 1127).Examining attorneys must scrutinize specimens for signs of digital alteration or mockup characteristics. Identifying features of improper specimens include pixelization around the mark, floating marks, missing trade information, and crude labeling, which indicate digital manipulation or hypothetical usage. If suspicious, they may refuse the specimen. This request may involve proving use in commerce through various evidences like sales records or web page URLs.

  In essence, for a specimen to be valid, it must depict the mark as it is genuinely used in commerce, not as a hypothetical or manipulated image. Ensuring that trademarks meet these standards prevents registrations based on unused marks, maintaining the integrity of trademark protection.

Filing Basis and Specimen Submission

The filing basis of a trademark application affects specimen submission. For an "intent to use" application, the applicant must eventually submit evidence of use through an Amendment to Allege Use or a Statement of Use. For a "use in commerce" application, evidence of use must be submitted at the time of application.

Applicants must ensure their specimens meet all requirements to avoid rejection by a USPTO examining attorney. The specimen must depict the mark as shown in the application drawing and demonstrate its use in a manner that consumers recognize as a source indicator.

Conclusion

Understanding and adhering to the trademark office specimen requirements is crucial for successful trademark or service mark applications. Applicants must submit specimens that show actual use in commerce, direct association with goods or services, and serve as a source indicator to be awarded a trademark registration. Familiarity with the United States Patent and Trademark Office Trademark Manual of Examination Procedure and guidelines ensures that applicants provide the necessary evidence, avoid common pitfalls, and achieve their trademark registration goals.

This article provided an overview of trademark specimen requirements, including examples of acceptable and unacceptable specimens. By following these guidelines and ensuring the submission of appropriate specimens, applicants can navigate the trademark application process more effectively and secure their trademarks under federal law.

If you have questions about trademarks, visit our trademark FAQ page, general trademark page, and our trademark registration page.