Specimen Selection & Review

Specimens are required to show the mark as it is seen by the purchasing public and provide evidence for the registration. The specimen must show evidence of the Use of the Mark in Commerce (see below) unless the application is for an Intent to Use. One of things the USPTO is looking for is to see if the mark is merely descriptive of the goods or services (common cause for rejection). Marks must be displayed in a manner so the consumer recognizes it as a mark and links it to the goods or services,  or in other words-functioning as a mark.

Acceptable specimens for goods (TMEP 904.04) include such items as “a label, tag, or container for the goods, or a display associated with the goods. A photocopy or other reproduction of a specimen of the mark as actually used on or in connection with the goods is acceptable.” Acceptable specimens for services normally consist of advertisements, displays, or signage (TMEP 1301). Note: Image files for all TEAS forms must be in JPG format. To file an initial application for a stylized or design mark, you must be able to attach a black-and-white image file. Where a specimen of actual use in commerce is required, you must attach a scanned image or digital photograph, showing the mark "in use"), not exceeding 2 megabytes per attachment.

Example of a poor specimen: One typical rejection of marks for t-shirts and hats is showing the potential mark decorating the front of the item. According to USPTO rules, this type of use is ornamental  and not an indication of the source of the goods, the source would be on a tag or somewhere less conspicuous. Unless a better specimen and use of the mark are provided to the USPTO, this type of specimen will lead to the mark achieving no registration or only Supplemental Registration because of ‘Ornamental Use of the Mark.’

A Supplemental Registration is a significant loss of rights (common law rights as well), especially if it could have been avoided by using a better specimen. See Comparison of Principal Register and Supplemental Register. A registration on the Supplemental Registration is an admission that the mark is not inherently distinctive, a slip in the foothold of  common law rights. See InherentlyDistinctive.com for more information on the importance of being inherently distinctive.

Poor Specimen: Specimen is of a Temporary Nature: An applicant must submit a specimen that is of a permanent nature.  An artist’s rendering of a label, rather than a label that is affixed to the goods or on containers/packaging for the goods, is a temporary label.  37 C.F.R. §2.61(b); TMEP §904.04(a).   An applicant must submit evidence of use of the proposed mark on applicant’s goods so that the registrability of the mark can be properly assessed which is not accomplished by a drawing showing an intended use.  This evidence may take the form of a photograph that shows the mark as it appears on the goods or as it appears on packaging for of the goods.  37 C.F.R. §2.61(b); TMEP §§814 and 904.03.

Use of the Mark in Commerce

Use the mark in commerce to gain common law rights and as a precursor to registration. State registrations require bona fide use in commerce before registration (an extension of common law rights). The USPTO’s most common filing basis-1A (about 50%) is for marks already in use in the U.S.

Other USPTO filing basis: 1B-intent to use (about 42-43%), 44D-foreign application, 44E-foreign registration, 66A Extension of Protection of International Registration. More than one basis can be claimed.

TMEP 901.01 “Section 45 of the Trademark Act, 15 U.S.C. §1127, defines “commerce” as “all commerce which may lawfully be regulated by Congress.” Section 45 defines “use in commerce” as follows: The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce--

(1) on goods [trademark] when--

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services [service mark] when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.”

or File for ‘Intent to Use’ in Commerce

The USPTO allows ‘intent-to-use applications under which the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. After Notice of Allowance, and prior to registration, the applicant must file an allegation of use or a statement of use under that states that the applicant is using the mark in commerce on or in connection with the goods or services; includes dates of use and a filing fee for each class; and includes one specimen evidencing such use for each class. See TMEP 801.01(b) for more information.

Note: The right to register a mark with the USPTO is determined by both the application and the mark. A proper specimen that agrees with the actual use in commerce is a vital part of the application. Many  trademark refusals can be avoided or overcome by using Not Just Patents ® Trademark Services. Call us at 1-651-500-7590   and ask for examples of how we can help.


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Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

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