Specimens - Look Simple But Can Be Tricky

Specimens are a hot topic at the United States Patent & Trademark Office ("USPTO"). The Trademark Office is cognizant that the Trademark Register is vital to maintaining an accurate record for trademark owners, and to maintain the integrity of the Register. Specimens are essentially examples of use of the mark on the goods or services in commerce. For more general information on specimens, see our firm page entitled, Acceptable Trademark Specimens. The type of specimen submitted to the USPTO will vary based on whether you have identified goods or services in your trademark application. There is less room for error with specimens for goods, since the mark can be placed directly on the goods, tag, label, packaging, on the container itself, or a display associated with the goods. Specimens for services are more complicated. Common examples of use for services will be found in marketing materials, websites, business cards, menus and brochures. The specimen must show an association between the mark and the services. If the example of use only shows the mark alone, and no reference to the type of services this will not be acceptable upon submission to the USPTO.

The USPTO has concerns that applicants are submitting specimens that are not authentic, and that registrants stop using trademarks and do not surrender the mark to clear the Register. It is becoming more and more difficult to clear trademarks prior to filing an application. Therefore, it is critical to eliminate marks that are abandoned, not in use, or rely on fake specimens. The USPTO has made efforts to clear the Trademark Register of marks not in use by implementing a program to report marks that have submitted specimens that are digitally altered or fabricated. The objective is to eliminate fraudulent submissions filed by trademark applicants, and to only include marks in the Register that are actually in use. Reports can be filed via email to tmspecimenprotest@uspto.gov.

Another program the USPTO has initiated to achieve this end, is a pilot program giving parties the opportunity to engage in an expedited cancellation procedure if the plaintiff has grounds to allege non-use. A typical non-use cancellation proceeding can endure for a couple of years if fully litigated. Non-use matters will be more easily disposed of because they should have a simple set of facts. For more information on this topic, see our blog post entitled, The USPTO's Efforts To Improve Accuracy Of The Trademark Register. This expedited cancellation matter should take approximately 70-170 days to resolve, instead of two years or more.

A recent precedential case issued at the end of June by the TTAB, illustrates that applicants continue to struggle with submitting appropriate specimens. Unfortunately, when the USPTO refuses a specimen the consequences are harsh, and attempting to remedy the matter can be extremely expensive. See In re The Cardio Group, LLC, 2019 USPQ2d 227232 (June 20, 2019) [precedential], where the applicant was seeking to register the mark THE CARDIO GROUP & Design for "retail store services featuring medical devices." The Examining Attorney refused to accept the specimen stating that the mark was not shown to be in use with the services.

The applicant submitted several specimens, one showing medical data of a patient along with the mark, a sales agreement showing the mark, and a sales invoice showing the trademark, THE CARDIO GROUP & Design with certain devices purchased. The Examining Attorney stated that the specimens showed that the applicant used the mark to sell products, but there was no evidence that demonstrated that the sales were made at a retail store. The specimen does not necessarily have to refer to the services identified in the trademark application, but there must be some way that consumers perceive an association between the mark and the services.

Typically, a specimen will contain a reference to the services and to the source. Showing only the trademark with no mention of the services does not show the mark in use for those services. Applicants can clarify the manner in which the mark is used by submitting an explanation as to how the specimen is used in commerce. The applicant should provide as much information as possible to the Examining Attorney regarding the rendering of the services. The question to ask is if the consumer only views the specimen without knowing more, will they know that the mark is a source indicator for the services in the application. The Board could not answer this question affirmatively for the specimen for THE CARDIO GROUP, and affirmed the refusal to register the mark based on an unacceptable specimen. If you have questions pertaining to specimens or trademark registration, please contact the firm for a courtesy consultation.