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.

StepsToATrademark.net


Not Just Patents®

Aim Higher® Facts Matter

Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418

1-651-500-7590    

WP@NJP.legal


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.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    


Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


©2008-2017 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us