Frequently Asked Questions about Basics, Timing, Sufficiency and Reasons for Rejection of a Trademark Specimen
When will I have to provide a specimen of use for my Trademark?
At some point in the life of a trademark, the trademark owner must submit a specimen of use evidencing use of the trademark in commerce.
Specimen of use are required at the time of filling of an application based upon actual use in interstate commerce. Specimen of use are required prior to the granting of a Federal Trademark Registration in an intent to use application (ITU). Certain trademark applications that are based upon foreign applications, registrations or the Madrid Protocol do not require specimen of use to achieve registration. However, each type of trademark registration requires a specimen of use between the 5th and 6th year after registration along with the Affidavit of continued use under Section 8. Furthermore, a specimen of use is required at the time of each ten year renewal of the Federal Trademark (again, under Section 8).
How many specimen of use are needed?
When a specimen of use is required, it is important to note that a specimen is not required for each and every good and service identified in the application or registration. Rather, a single specimen of use must be submitted for each International Class. So, if the application or registration has dozens of goods or services in a single International Class, it is only necessary to provide a single specimen of use. Note that the USPTO can request additional specimen at any time during a review process, and this has become more common in recent times.
What is a proper specimen of use?
The USPTO has many guidelines on that is acceptable and what is not acceptable for a specimen of use. The guidelines vary depending on whether the specimen of use is for a good or for a service.
If the specimen of use is for a service, what does acceptable specimen of use include?
Online advertising or printed matter showing a direct link association between your trademark and the services. An example of this would be a screenshot of a webpage showing an advertisement for the services. It is important to note that when websites are used, it is necessary to show the URL and the access date or print date.
Television and radio commercials for the services. An example would be the submission of an mp3 sound file or an mp4 video file of a television or radio commercial that advertises the services listed in the trademark registration.
Marketing material showing a direct association between your trademark and the services. An example would be a brochure that is handed out by the trademark owner at tradeshows or mailed to prospective clients.
Signage where the services are rendered. An example would be a photograph of the physical business where the mark is on a sign and it is clear from the physical business the services associated with the mar.
Material used in the providing/rendering of the services. An example would be a photo of a menu from a restaurant or a photograph of the price list for a salon.
Invoices showing a direct association between your trademark and the services. An example would be an invoice for car parts by an seller of auto parts.
Business cards and letterhead showing a direct association between your trademark and the services. An example would be an attorney’s business card which identifies that the services “attorney at law” on the business card.
What if the specimen of use is for goods, what does acceptable specimen of use include?
The goods themselves. One example would be a photograph of a car showing the emblem of the car. Another example would be the start up screen shot of software having the mark displayed on the screen.
Labels and/or tags for the goods. An example would be a clothing tag that is stitched into the goods, or a hang tag coupled to goods.
Packaging for the goods. An example would be a box for an auto part that has the trademark on the box.
Sales displays where the goods are sold. Commonly also known as point of purchase displays (POP). An example would be a container with candy on the counter of a store, where the container has the mark on it.
Catalog pictures. Pictures from a catalog where three different criteria are met: (1) the catalog includes a picture or a sufficient textual description of the relevant goods; (2) the catalog shows the mark in association with the goods; and (3) the catalog includes the information necessary to order the goods
Website selling the goods. This is type of specimen that can cause the greatest amount of problems for Applicants. The general guidelines are: A web page that displays a product can constitute a “display associated with the goods” if it: (1) contains a picture or textual description of the identified goods; (2) shows the mark in association with the goods; and (3) provides a means for ordering the identified goods. To comply with the first requirement, something on the web page must show or describe the goods for the consumer, that is, a picture or description of the goods. To comply with the second requirement, the web-page display specimen “must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source. One can look to the prominence of the mark, the placement of the mark and proximity to the goods. To comply with the third requirement, one must sufficiently provide a means by which to order. A recent Federal Appeals court decision confirmed a specimen rejection because the (1) price or range of prices for the goods, (2) minimum quantities one may order, (3) accepted methods of payment, or (4) how the goods would be shipped were not present. If virtually all important aspects of the transaction must be determined from information extraneous to the web page, then the web page is not a point of sale. A “where to buy” link “a contact us link” or a listing of telephone numbers and email addresses is likely insufficient, whereas “buy it now” buttons, or a shopping cart system would likely be sufficient. Additionally, extra care has to be taken where the website is for a third party vendor (i.e., a big box store website) rather than the trademark owners website. There are many rejections based upon insufficient specimen where the specimen that was submitted is a website.
What other rejections might occur with specimen of use?
Other areas where rejections to specimen can occur is where the specimen does not match the trademark exactly as it appears in the application. This can happen for word marks, for example, where the applied for mark was a single word, but the specimen shows the mark as two words, or as two words with a hyphen. For logos, there may be slightly different versions or the like where the logo as filed is not identical to the logo that is used in the specimen. These situations lead to rejections of the specimen.
Also, it is not correct to utilize the “circle R” symbol ® on a specimen of use (only when filed along with an actual use application, or with an amendment to allege use (AAU) or a statement of use (SOU). That is, there is no right to use the “circle R” symbol unless and until a trademark is registered. Therefore, the filing of a specimen with the “circle R” symbol will lead to a rejection. One can always use a small superscript symbol TM for goods or SM for services until the mark is registered. Of course, for Affidavits of continued use under Section 8 or Section 71, the mark has already registered, and submitting specimen of use that include a “circle R” in those instances is appropriate.
What do I do if my specimen of use is rejected?
If a specimen of use is rejected, it is important to understand why the specimen has been rejected. In many instances, a substitute specimen will have to be filed, and certain affirmative statements must be made to confirm the availability of the specimen at a particular time. In other instances, it may be able to argue the sufficiency of the initially filed specimen, in the event that it is rejected. If you have a specimen rejection before the USPTO, a member of our team can help you respond to the USPTO.