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By Purple Fox Legal

September 21, 2022

Applying for and filing a new trademark registration application is no simple task. The process requires quite a bit of research, time, and effort. It also demands supplementary documents and supporting pieces of evidence. This is all done in an effort to prevent trademarks that are too broad or ones that overlap. One of the most important pieces of evidence is the trademark specimen of use. 

We’ll start by covering the most basic requirements for trademark registration and the purpose they serve. Then, we’ll define the trademark specimen of use and why specimens are important to the trademark process. Finally, we’ll be sharing the requirements for trademark specimens and what you can do if yours are denied. 

Requirements for Trademark Registration

The specimens of use aren’t the only requirement when applying for your trademark registration. Four main requirements must be met to successfully register a trademark with the U.S. Patent and Trademark Office (USPTO). They are:

• A distinctive mark
• A mark that will not lead to a likelihood of confusion with other trademarks
• A mark that has been used in interstate commerce (i.e., more than one state)
• A mark that identifies the source of a good or service (i.e., is being used as a trademark and not a decorative aspect)

If your mark has not yet been used in interstate commerce, you can still include the word mark or logo in your USPTO intent-to-use application. However, in today’s article, we will be discussing specimens for trademarks that are in current use. 

What is a Trademark Specimen of Use?

In a USPTO trademark application, the specimen of use is the evidence used to prove that a trademark has been used in interstate commerce. Trademarks cannot simply be an idea in a business owner’s mind or a decorative element of a company’s branding. They are symbols, signs, and designs that have been successfully affixed to goods sold under that business that clearly identify the source of goods and services.

The purpose of a trademark is to allow consumers to identify the source of a good or service. Thus, a trademark must be used in a certain way in order to be eligible for federal trademark protection.

Why are Trademark Specimens Important?

Trademarks help create a connection between a business and the goods and services it provides. The specimens of use in your trademark application provide evidence of your mark’s use in the business world (i.e., interstate or even international commerce). A specimen proves that this connection has already been established. Including specimens in the trademark application is also a critical step in preventing fraud as well as any delays in processing your application. Proving a mark’s current use in the world of interstate commerce helps establish a true trademark and prevent the registration of invalid marks. 

What Are the Requirements for a Trademark Specimen?

Now that you know what a trademark specimen is and its importance in the application process, it’s even more helpful to know the requirements for a specimen. The USPTO requires at least one specimen for each class of goods in your application. Specimens must:

• Provide a real example of your trademark in commerce (not mock-ups or digitally-altered images)
• Depict the exact trademark in your application
• Provide an example of how your mark is directly associated with the goods and services listed in your application
• Provide evidence for how your design functions as a trademark (i.e., is not functional and is not simply decoration)

Acceptable trademark specimens of use must be located on the products or goods themselves. This requirement slightly differs when attempting to register product packaging trade dress and product design trade dress. If your trademark can only be found on a label or tag, the label or tag must be physically affixed to the goods. 

Examples of Acceptable Specimens

Trademark specimens will look different for each business owner, which is one aspect that makes them so tricky. They can also be submitted in a variety of different formats, depending on where your trademark has been used. Some, but not all, examples of acceptable specimens of use are as follows. 

• A photograph of your trademark being used on the bottom of a coffee mug
• A screenshot of your trademark in use on an online instruction manual
• A photo of your trademark being used on a packaging label
• A screenshot of your trademark on your website or blog
  • Website specimens of use must contain a “buy now” or “book now” button showing how consumers can access the products or services
• A photo or screenshot of your mark in an advertisement

What if my Trademark Specimen is Refused?

Despite doing all the research and preparation, your trademark specimen (and overall application) could ultimately be refused. This can be difficult to overcome. There are ways to respond if your trademark specimen is refused. You could:

1. Submit alternate specimens: Any alternate specimens must have existed before the filing date of your application unless you submitted an intent-to-use application.

2. Oppose the refusal: This can be done by presenting additional evidence and legal arguments to support the specimens in question. 

3. Appeal to Trademark Trial and Appeal Board (TTAB): If you receive a final office action from the examining attorney refusing to accept your specimen of use, you may be able to appeal the decision to the TTAB. However, doing so may be expensive and it is highly recommended to hire an attorney before initiating a TTAB proceeding. 

Tips for Submitting an Acceptable Specimen

Dealing with a trademark specimen refusal is one headache you don’t want to have. The best way to prevent it is to submit acceptable specimens from the beginning. This is easier than you might initially believe. First, make sure that your specimens are of the highest quality. High-quality, acceptable specimens are ones that:

• Show the trademark on your goods
• Are legible and clear
• Show the actual use of your trademark

Remember, the purpose of trademarks is to improve the lives of consumers and make it easier for them to identify goods and their brands. Many business owners benefit from seeking legal counsel during their trademark registration process. A qualified and experienced attorney can help you submit the right trademark specimens from the beginning. They can prevent the hassle associated with application refusal and get your business on the right path from the start.