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.
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:
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.
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.
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.
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:
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.
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.
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:
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:
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.