Acceptable Trademark Specimens

Specimens are required to be submitted during the trademark prosecution. A specimen is an example of use of the trademark or service mark in commerce in connection with the goods or services identified in the trademark application. If you file a trademark application under Section 1(a) of the Trademark Act, you must submit a specimen at the time of filing the application. If you file a trademark application under Section 1(b) of the Trademark Act then, you will be required to submit a specimen at the time you file a Statement of Use. No specimen is required in an application based on §44 or §66(a) of the Trademark Act because only a bona fide intent-to-use the mark is required and not actual use of the mark prior to registration.

A trademark specimen can be a digital image of the product showing use of the trademark on the goods itself, or on a tag, label, container for the goods, or a display associated with the goods. For example, a Web site page that shows the goods and provides a means of ordering the product can qualify as a display associated with the goods, if the trademark appears on the Web page in a manner that associates the mark with the product. See The Trademark Manual of Examining Procedure §904.3(k) for more information regarding how a website page may be used as a specimen for goods. One specimen is required for each International Classification identified in the trademark application.

The USPTO will consider possible acceptable customs of a particular industry when determining if the specimen is acceptable. For example, in connection with video-tapes, computer programs, and the movie industry, there is an adopted practice of applying trademarks to the programs or movies when they are displayed on the screen. It has been determined that it is not necessary for the purchasers to see the trademark prior to purchasing the goods. In this case, a photo of the screen display would be an acceptable specimen.

Sometimes a specimen will show that the applied for mark fails to function as a trademark. The following is a list (although not exhaustive) of some examples of this scenario: (1) the mark is used solely as a trade name; (2) the mark is mere ornamentation; (3) the mark only identifies a performing artist, author or character; (4) the mark only identifies a process, system, or method; (5) the mark is merely informational matter; and (6) the mark may only refer to a domain name.

A specimen for a service mark must show the mark as used in the sale or advertising of the services identified in the trademark application. Examples of acceptable specimens include website pages, newspaper and magazine advertisements, business cards, brochures, menus, etc. Sometimes it is helpful to provide a supporting declaration describing the service offered in connection with the trademark. In order for the specimen to be acceptable it must demonstrate use of the mark in a manner that would be perceived by potential consumers as identifying the applicant’s services and indicating the source. For example, a specimen that shows only the mark and does not describe the services will be considered deficient. However, exceptions are made for specimens submitted in the course of rendering or performing the services.

In such cases, a reference to the services on the specimen itself may not be necessary. See In re International Environmental Corporation, 230 U.S.P.Q. 688, 1986 WL 83608 (TTAB 1986), where the Trademark Trial and Appeal Board (TTAB) determined that a specimen was acceptable even though it did not specifically refer to the applicant’s services (it was a survey distributed to potential customers of applicant’s heating and air conditioning services). The record reflected that the sale of the services involved ascertaining the needs of the customers and the surveys were the means by which applicant offered its distributorship services to the public. Experienced trademark counsel can assist you in determining if the intended specimen will be acceptable to the USPTO. We would be happy to assist you with your trademark prosecution or with any related trademark questions. Contact our offices to schedule a courtesy consultation.