Trademark law in the United States is unique in several ways. For example, you generally have to use your trademark in commerce before you can obtain a federal trademark registration. To demonstrate use of your trademark, you will have to provide evidence called a trademark “specimen” to the U.S. Patent & Trademark Office as part of the application process. There are important rules and guidelines to follow when submitting your specimen. Submitting an improper specimen can cause your application to go abandoned.
When Do I Submit the Trademark Specimen?
When you submit your specimen largely depends on your trademark filing basis. When you submit your application on an “in use” basis, you are telling the USPTO that your trademark is already being used. In that case, you would submit the trademark specimen when filing your application.
On the other hand, if you filed on an “intent to use” basis, you would not file the specimen with your application. Instead, you will have more time to actually start using your trademark with your products or services. After your application has been reviewed and published for opposition, assuming there are no issues the Trademark Office will then issue a document called the “Notice of Allowance.” Once the Notice of Allowance issues, you can file a Statement of Use, which will include your specimen.
The specimen can also be submitted prior to the Notice of Allowance issuing for an intent to use application. This is done through a filing called the “Amendment to Allege Use,” which is essentially the same as a Statement of Use.
What Must the Specimen Include?
What you submit as a specimen largely depends on the nature of the products or services you provide. However, some things are universal. First, the specimen will need to show the trademark in your application. The trademark shown in the specimen must exactly match the mark as it appears in your application. If it does not match, you will receive an office action with a specimen refusal. If you have filed for just the wording, then the font/size/design used for the trademark does not matter as long as the wording matches exactly what is in your application. For logos, the design must match what is in the application.
The trademark specimen must also show the trademark used in connection with the products/services in your application. For example, if you submit a business card with your business name on it, the card must state what your business does. If it does not, the specimen will be rejected.
If you submit a specimen that is not found to be acceptable by the Trademark Office, then you will receive an office action. Like other office actions, you must respond in a timely fashion, otherwise your trademark application may go abandoned. Of course, your response will also have to adequately address all the issues raised by the trademark examining attorney. In most cases, you will not receive a trademark registration until you show use of your mark with a proper specimen.
Product Specimens
To demonstrate trademark use with products, in most cases you can submit a photograph of the product or product packaging. The important thing is to make sure that the trademark is clearly shown in the photo and that you can tell what the product is. In some cases, you might use a photo of product display signage at a store where the products are sold.
There are situations where you might want to use something other than a photograph to demonstrate use. If your product is sold in an online store, for example. In that case, you may be able to submit a screenshot of the store’s product page. For the specimen to be acceptable, the screenshot typically needs to show a photo of the product, its price, and also a link where the item can be added to a shopping cart.
Service Specimens
To submit a specimen for services, there are also several options. Almost all businesses have a website. The most common specimen for services would be a screenshot from your website that shows the trademark along with a description of the services provided. You can also submit PDFs or copies of advertising and marketing materials. Brochures and pamphlets are a good example of this. You might even submit a specimen of storefront signage for the business, if there is a brick and mortar location.
Recently, the Trademark Office has enacted new requirements for specimens that include screenshots of websites. When using screenshots as a specimen, the screenshots must show the URL from the webpage. They also must show the date the screenshot was taken. This is easily accomplished by taking a screenshot of the whole screen that shows the URL in the browser and date in the corner of the screen (for Windows). Alternatively, the USPTO forms for these filings contain spaces where you can manually input this information.
Do You Need Help Showing Use of Your Trademark With a Specimen?
If you are not sure whether you have an acceptable specimen for your application or Statement of Use, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
