Why the need for substitute specimens of use?
If you’ve encountered a rejection of your trademark specimens of use, then you know what I’m talking about. Substitute specimens. Why and when do they come into play? What exactly are substitute specimens? What are the timing requirements? Can you create new specimens in time? You have questions. Hopefully, we have some answers.
Substitute specimens in a Section 1(a) use-based trademark application
Let’s start with trademark applications initially filed based on use in commerce under Section 1(a). These are trademark applications that require specimens of use and dates of first use in the initial filing. Suppose the trademark examiner (“examining attorney”) rejects the original specimens submitted with the initial filing. In response to the specimen rejection, you have a couple of options.
Initially, try to see if you have other examples of trademark usage there were dated or used prior to the filing date of your trademark application. If so, you can respond to the Office Action by submitting those pre-application examples of use as substitute specimens.
What if you cannot find any pre-application examples of usage that would be satisfactory? Don’t despair. You can actually amend your application from a use-based filing basis to an Intent-To-Use filing basis. You will have additional costs in eventually submitting use evidence in an ITU-based application.
Intent-To-Use application: What are your substitute specimen options?
Your options in responding to a specimen refusal will depend on when you submitted your original specimens. If your evidence of use was filed before your application was approved for publication, then you filed an Amendment to Allege Use (AAU). If your use evidence was filed after a Notice Allowance, you filed a Statement of Use (SOU).
Amendment to Allege Use: How to deal with specimen refusal
If your original specimens were submitted with an Amendment to Allege Use (AAU), you can:
- submit different specimens that were in use as of the filing date of the AAU; or
- withdraw the AAU.
Your substitute specimens must have been in use when your AAU was filed.
If you find it difficult to locate different specimens that existed as of the time you filed your AAU, you have a fallback option of withdrawing the Amendment to Allege Use. As a result of retracting your allegation of use, you buy more time to come up with new specimens of use.
Statement of Use: How to deal with specimen refusal
If your rejected specimens were submitted in a Statement of Use (SOU), you cannot withdraw the SOU. So it is critical to make sure you have enough evidence of use when you decide to file the Statement of Use.
In responding to a refusal of specimens filed in a SOU, you can file:
- replacement specimens can be either specimens that were already in use prior to the filing date of the SOU;
- new specimens created and used in time before the 6-month SOU deadline expired; or
- a one-time insurance extension to buy 6 more months of time.
For example, suppose you receive a specimen-rejecting Office Action during month 4 of the 6-month period following the Notice of Allowance. You double-check your examples of usage and cannot find any other specimens that were used prior to filing the SOU. In this scenario, you still have 2 months remaining to create new specimens and begin using them. The timing can be challenging, but not impossible. You may need to create new packaging showing the mark, and then promptly ship goods with the new packaging within the remaining time period.
What if you can’t come up with new specimens in time? Another option would be to file a one-time insurance extension which will buy you 6 more months to create and use new specimens.
Compared to an Amendment to Allege Use which can be withdrawn, filing a Statement of Use is less flexible. You want to make sure you have ample evidence of use when you file the SOU.
If you have only a limited number of specimens, file the SOU earlier during the 6-month period so that you can receive an earlier decision of either acceptance or rejection. An earlier notice of rejection gives you more time to prepare new specimens or request an insurance extension if more time is needed.
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