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 show use, 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.
When Do I Submit the Trademark Specimen?
The time for submitting your specimen largely depends on you 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 with 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 and/or services. After your application has been reviewed and published for opposition, assuming there are no issues the Trademark Office will issue a Notice of Allowance. Once the Notice of Allowance issues, you can make the Statement of Use filing, which will include your specimen.
The specimen can be submitted prior to the Notice of Allowance issuing for an intent to use application. Although the filing is essentially the same as a Statement of Use, it is technically called the Amendment to Allege Use.
What Must the Specimen Include?
What you submit as a specimen largely depends on the nature of the products and/or services you provide. However, there are some things that are universal. Obviously, 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 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 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 the issue(s) raised by the trademark examining attorney. You will not receive a trademark registration until you show use of your mark, so a proper specimen must be submitted for all applications.
To demonstrate trademark use with products, in most cases you can submit a photograph. The photograph can be of the product itself or its product packaging. The important thing is to just make sure that the trademark appears in the photo and that you can tell what the product is from the photo. You can also 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.
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 screenshots are used as a specimen, they 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 forms used 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) 360-34998, email me at firstname.lastname@example.org, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.