The U.S. Patent and Trademark Office (USPTO) won’t issue a trademark registration for a mark that isn’t currently “used in commerce,” and it will cancel an existing mark if the owner does not show they are actively using their mark. But the USPTO won’t just take an applicant’s word that they are using their mark in commerce. The USPTO requires proof; they need a real-life example of how the trademark is used with the goods or services in the application or registration maintenance filing. They want to see what consumers see, meaning the applicant must submit a “specimen” demonstrating their use of the mark before it will issue or renew a registration.
However, not every specimen submitted makes the cut. The USPTO has very specific requirements for specimens, and if you want to avoid delays or the denial of your trademark application, you need to ensure yours is acceptable.
Goods v. Services
Because of the inherent differences between goods and services, the way marks are used with each differs. For example, you can put a label on a bottle of soda, but you can’t necessarily put one on an accountant.
Accordingly, what constitutes an acceptable specimen depends on whether it is associated with a good or service. For both goods and services, the specimen must show the trademark as actually used in commerce, so it directly associates the trademark with the goods or services. Trademark use is very specific, you can’t just use a mark in any manner and consider it “using your trademark.”
For goods, an acceptable specimen could be:
- A tag or label containing the mark attached to the product.
- Product packaging or a container showing the trademark on the packaging.
- Sales displays at a location where the goods are available for purchase.
- A website displaying the mark where the goods can be purchased or ordered.
For services, an acceptable specimen could:
- Show the mark used for the services on an advertisement, brochure, website printout, or other material.
- Include the mark on a television or radio ad.
- Show the mark on business signs where the services are provided.
- Show the mark on business cards or letterhead.
- Show the trademark on a service vehicle.
The USPTO will likely reject a specimen and thus reject your application or registration maintenance filing unless it meets these requirements:
- It must be a real example of how you use your trademark in commerce in providing your goods or services. Mockups, proofs, and renderings of intended packaging won’t cut it.
- It must show your trademark used with the goods or services listed in the application. A label displaying the mark won’t be accepted unless the label is shown on or attached to an actual product in the specimen, for example.
- It must depict the same trademark as shown on the drawing submitted with the initial application.
- There must be a specimen for each class of goods or services in your application or registration maintenance filing.
- It must show your use of your trademark as opposed to use by someone else.
- It must show the trademark used in a way that directly associates the mark with the goods or services.
- It must show the trademark used in a way that consumers would see it as a source indicator for the goods or services in the application.
- If the specimen is a webpage, it must include the URL and date you accessed or printed the webpage.
How and When to Submit Specimens
The USPTO won’t accept physical specimens, so don’t try shipping your product or business card to Washington. The specimen must be submitted electronically through the TEAS system.
If you are already using your mark in commerce, you should submit your specimen with your application. If you are filing an “intent-to-use” trademark application, you can either submit your specimen before the USPTO approves your application for publication by filing an Amendment of Allege Use (AAU) or after it issues a Notice of Allowance (NOA) by filing a Statement of Use (SOU). You also need to submit a specimen of the mark as currently being used in commerce with your affidavit or statement of use that must be filed between the fifth and sixth year after registration and then every ten years after that.
If you have questions about acceptable trademark specimens or need assistance with your trademark application, please contact the attorneys at The Dobrusin Law Firm.