What is a trademark specimen of use?
Trademarks do not exist in vacuums. One cannot simply register a mark without reference to specific goods or services sold under the mark. Generally, an applicant has to provide the USPTO with current examples of how the mark is used in the sale of the specific products and/or services identified in the trademark application. These examples, called specimens of use, are subject to very specific USPTO rules on what makes a specimen acceptable.
When are specimens required by the USPTO?
Specimens of use are required upfront when filing a use-based application filed under Section 1(a), which makes sense since the applicant is declaring that the mark has already been used in commerce.
Specimens are not required with the initial filing of an Intent-To-Use (ITU) application. This gives an ITU applicant more flexibility in identifying a multitude of goods and services that might ultimately get deleted from the application. Eventually, an ITU applicant will need to submit specimens in connection with filing an Amendment to Allege Use (AAU) or a Statement of Use (SOU) depending upon the specific stage of the ITU application. Any unused goods or services at the time of filing the evidence of trademark usage must be deleted from the application or divided out under a Request to Divide.
One exception to the general requirement of a specimen is when a US application is based on a foreign registration. In such a case, the ITU filing basis under Section 1(b) may be deleted, and a US application may proceed to registration on the basis of the foreign registration alone assuming all other conditions for registration are satisfied.
Specimens of continued use are also required when maintaining or renewing a trademark registration.
Specimens for goods vs. specimens for services
The USPTO has imposed various rules and guidelines on what constitutes an acceptable specimen of use. Keep in mind that specimens for goods differ from specimens for services.
For goods, advertising and marketing materials are generally unacceptable. Acceptable specimens for goods may include:
- photographs of the product showing the mark directly on the product (e.g., the bottom of a coffee mug)
- product labels and tags showing the mark (e.g., the label on a t-shirt)
- photos showing product packaging with the mark clearly displayed. This is particularly relevant to products upon which the mark cannot be placed (e.g., detergent soap packaging)
- webpages showing or describing the product near the mark and with purchasing information (e.g., a webpage showing a photograph of a computer laptop, the mark for the laptop appearing above the photograph, the price appearing below the photograph, and a shopping cart button/link appearing on the page)
- For downloadable software, copies of the instruction manual and screen printouts from (1) web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, (2) the actual program that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program
- product instruction sheets, instruction manuals or other printed matter that are included with the goods [see TMEP Section 904.03(j)]
For services, specimens must show the mark in connection with the sale or advertising of services in order to be acceptable. Acceptable specimens for services may include:
- marketing materials
- photographs of signage
Can I use circle R ® symbol on specimens?
No, do not use the circle R symbol on specimens because ® can only be used on a mark after it has been federally registered with the USPTO. You may use the TM symbol on goods or the SM symbol on services.
If a foreign applicant submits specimens showing the circle R symbol, such specimens might be acceptable if the mark is registered in one of the following foreign countries that recognizes the use of the ® symbol [see TMEP Section 906.01]:
- Costa Rica
Will webpages, electronic displays or point-of-sale displays suffice as specimens?
Although the general rule is that advertising materials are unacceptable as specimens for goods, certain displays associated with goods may constitute acceptable specimens [see TMEP 904.03(i)].
Webpages and other electronic displays may be acceptable if they:
- contain a picture or textual description of the goods identified in the trademark application;
- show the mark in association with the goods; and
- provide a means for ordering the goods.
Catalogs might also constitute acceptable specimens for goods if they meet the above conditions. Typically, the missing element in many catalogs and webpages is the ordering information.
An electronic display may fail to show the mark in association with the goods if the location of the mark is distant from the goods. A webpage as a specimen for goods might also be rejected if the mark appears to identify the website (in which case the mark might suffice for retail store services), but not the goods.
Sufficient ordering information may include a shopping bag, shopping cart, add to cart button, or a phone number for placing an order (as opposed to a general phone number for the seller). Email addresses and Contact Us information would generally be insufficient.
Will crowdfunding campaign suffice as specimen of use?
A Kickstarter or Indiegogo webpage will not suffice as a specimen of use if the goods have not been sold or shipped in US commerce. Raising funds for a project does not arise to use in commerce.
USPTO classes of goods and services
When your trademark application was filed with the USPTO, you may have noticed a Class number associated with the goods or services identified in the application. That’s because the USPTO has categorized nearly all the goods/services that can possibly be included in an application under 45 different classes. Such classification helps determine, among other things, whether a mark in one class might be distinguishable from a similar mark in a different class.
Only one acceptable specimen is required for each class even if, for example, 30 different goods are listed in the same class. Keep in mind, however, that the applicant must still use the mark in connection with all the goods/services identified in that class even though only one specimen is being submitted.
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