When you file for federal trademark protection with the U.S. Patent and Trademark Office, you must file a Specimen of Use. This is because you may only protect marks that you actually use in commerce (or in some cases marks that you intend to use in the near future). However, the issue of what constitutes an acceptable specimen of use is sometimes confusing. In this post we will help to clarify what you should, and should not, file.
Specimen Defined
The USPTO states that a specimen is “a sample of how you actually use your mark with the goods and/or services identified in your application.” Typically that means the USPTO wants to see how you use the mark in commerce and how a consumer is likely to see your mark on the goods or associated with the services. As you might have picked up, there are different requirements for usage on goods versus usage for services.
Specimens for Goods
When applying for a mark associated with the sale of a particular good, the USPTO will require a specimen attached to the actual goods itself. That means a shirt tag, on the packaging, or sometimes on a promotional stand or window display. Copies of invoices and other marketing materials are usually not sufficient.
The USPTO maintains a large list of acceptable specimens for goods and they include in that list product labels, product packaging, product display signage, and screenshots of websites where the goods may be purchased.
Specimens for Services
Since services are often intangible, the specimen requirements for service mark applications are a little easier to satisfy. Typically the USPTO will require a specimen that shows how the mark is used in the “sale, rendering, or advertising of the services.” The key is to use the mark in close proximity to the services performed.
The USPTO’s list of acceptable specimens for services include advertising materials, brochures, restaurant menus, business cards, and business signs.
Specimen Refusal
If you submit an application with an improper specimen, the USPTO will likely send you an Office Action requiring you to submit a proper specimen. If your application is denied for this basis, it is important that you respond quickly so you don’t lose your application. If you have questions about your specimen you can also call the examiner that denied your application (their phone number will be on the Office Action).
You will then be required to submit a proper specimen that was in actual use on or before the date of your application. If you cannot do this, then your application will not get passed the examiner.
And remember, if you are confused about what constitutes a good trademark specimen, the attorneys at Mighty Marks® are ready to help you through the process.
Image: Thinkstock/darkovujic
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.
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