Why trademark specimens of use get rejected
Back in the old days when paper trademark applications were filed via snail mail, original specimens of use were mailed to the USPTO. The physical specimens of use had to meet certain dimensional requirements, such as being flat or flattened, in order to avoid the hassle of dealing with bulky trademark specimens.
Nowadays, nearly all trademark applications are filed online. The electronic submission of specimens certainly has both advantages and pitfalls. When specimens of use are reduced to digital files, there will be the temptation to create or alter those files digitally. The USPTO is now dealing with the prevailing problem of fake specimens that do not really show true use of the mark in commerce.
What are digitally created or altered trademark specimens?
A digitally created specimen is defined by the USPTO as a “digital drawing of the goods or packaging on which the mark appears.”
A digitally altered specimen takes an existing image and digitally alters that image to, for example, display a mark that was absent in the original image.
What is a mockup specimen?
A mockup specimen is a rendering of what a mark would like on a product, display, or website. Mockup specimens are typically created solely for submission with a trademark application.
How can the USPTO spot a mockup or tell if a specimen has been created or altered?
The USPTO looks for the following characteristics:
- The depiction of the product looks like a digital rendering rather than a real product.
- The product, label, or packaging is missing information typically included in the trade.
- The mark appears to float over the product or container.
- Features of the item disappear near or around the mark.
- The image includes pixelization around the mark.
- The mark is not applied to the product in a manner consistent with the material composition of the product.
- The mark appears on goods known to be marketed under a third-party mark.
- The website screenshot showing the mark includes placeholder text indicating that the website was not in use.
- The website screenshot showing the mark is missing important information such as a URL or browser tab, and is displayed in a way that suggests it is not published (e.g., within other software).
- Identical images display different marks or do not display any marks.
- Features of the goods suggest that the goods are used while the tag or label to which the mark is applied appears new.
- The labeling appears to be crudely applied to containers or plain boxes.
- The mark appears superimposed onto signage or other advertising or marketing materials for services.
- A webpage for an online marketplace, submitted as a display associated with the goods, includes indicia indicating that the mark is not in use in U.S. commerce or was not in use on the dates of use indicated in the application (e.g., language, currency, price, first available date, ship-to destination).
Retouched images on white backgrounds
If the image of a product bearing the mark appears to be retouched due to a white background, the examining attorney may conduct research to confirm that the product depicted in the specimen actually exists. If the research yields product listings that are suspicious or indicative of a lack of use, the examining attorney may request further information from the applicant. Therefore, we recommend not submitting images on purely white backgrounds.
How to respond to specimen refusal
If the examining attorney believes that a specimen is a mockup or has been digitally created or altered, a refusal will be issued with an explanation of the reasons for the rejection. The examining attorney will also include a request for information about the submitted specimen and other information and documents.
Examples of acceptable trademark specimens
The USPTO has provided helpful examples of acceptable trademark specimens of use here.