That’ll Work! Or, Will It? The Tricky Nature of Trademark Specimens of Use!

Anyone can file a trademark whether the mark is being used or not.   

However, a trademark will only be “Registered” after proof of use is submitted to the USPTO through what is called a “Specimen of Use”.  

A Specimen of Use is exactly that, an example that is submitted to the USPTO showing how the trademark is actually being used in commerce.  

Sounds simple, right?  

Well, unfortunately, submitting a trademark Specimen of Use that the USPTO will accept can be a shockingly difficult and frustrating experience for many applicants. 

Part of the difficulty in finding an adequate Specimen of Use is because many of the rules dictating what will work as an acceptable Specimen of Use simply do not make sense to a non-trademark practitioner. Making matters worse, it seems that many Trademark Examining Attorneys are generally inclined to reject a specimen first and ask questions later. 

Here are some thoughts and guidelines that can help navigate the tricky world of Trademark Specimens of Use.  

WHEN: 

An adequate specimen of use must be filed before a trademark application can be registered.  

Actual Use: An “Actual Use” trademark application is filed after the trademark has been in use in commerce. Meaning that the applicant used the trademark first and filed the trademark application second. In Actual Use trademark applications, a Specimen of Use is filed at the same time the trademark application is submitted to the USPTO.   

Intent-To-Use: An “Intent-To-Use” trademark application is filed before the trademark has been in use in commerce. Meaning that the applicant files the trademark application first, and after the trademark application is filed, the applicant begins using the trademark in commerce. This is a proactive approach to trademark filing. For Intent-To-Use trademark applications, a Specimen of Use must be filed within 6-months after a Notice of Allowance is issued. If the applicant is not using the mark within that initial 6-month window, up to 5 extensions, of 6-months each, can be filed, for a total of 30-months of extension time.   

Statement of Continued Use: In addition to the initial Specimens of Use that must be filed to get the trademark registered, all applicants are required to submit Specimens of Use between the 5th and 6th year after registration, and then every 10-years after the registration date. If adequate Specimens of Use are not filed, the trademark registration will be cancelled. If adequate Specimens of Use are filed, a trademark can essentially last in perpetuity.  

GENERAL RULES FOR SPECIMENS:  

There are many rules surrounding what will work as an adequate specimen of use. Some of the highlights are as follows: 

Real Use: An acceptable specimen of use must be a real example of how the trademark is used in commerce with the sale of goods and services. A mockup, prototype, printer’s proof, rendering, or draft does not qualify as it does not show use of the trademark in actual commerce. A “Token Use,” which is use of a trademark merely to secure trademark rights (e.g. selling one product to your friend) will not serve as an acceptable Specimen of Use.  

Exact Mark: An acceptable specimen of use must show use of the EXACT mark that was filed in the trademark application. The USPTO is very particular about this. The spelling and punctuation of the mark must be identical to what was filed. If the trademark application shows a dash between two words, the specimen must have the same dash. If the trademark application shows a space between two words, the specimen must have the same space. And, if the trademark application is a design application, the design must be identical to what was filed.  

Bold And Prominent Manner: An acceptable specimen of use must show use of the trademark in a bold and prominent manner. Use of a “Trademark” is not the same as use of a word. A trademark stands apart from other text and visual elements. A trademark draws attention to itself. Or, said another way, the viewer’s eye is drawn to the trademark. Conversely, a trademark is not buried among other text or hidden among other visual elements. As such, an acceptable specimen of use must show the trademark used in a bold and prominent manner, where the viewer’s eye is drawn to the trademark, where the trademark stands out and the viewer can instantaneously identify that it is a trademark.  

Close Proximity To Goods/Services: An acceptable specimen of use must show use of the trademark in close proximity to the goods and/or services identified in the trademark application. That is, the Trademark Examining Attorney must be able to see that the specimen shows use of the mark with ALL the goods and/or services identified in the trademark application.  

Each Class: An acceptable specimen of use must be submitted for each International Class of Goods and Services identified in the Trademark Application.  

SPECIMENS FOR GOODS V. SPECIMENS FOR SERVICES:  

What qualifies as an acceptable Specimen of Use differs whether the trademark is used with Goods or Services.  

Specimens For Goods: If the trademark application is for Goods (and not services) – then the specimen must show use of the trademark on or in close association with the goods themselves.  Examples of acceptable Specimens of Use for goods are as follows:  

• Labels: Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods. (TMEP 904.03(a)) 
• Stampings: Stamping a trademark onto or into the goods, the container or on tags or labels attached to the goods or containers. (TMEP 904.03(b)) 
• Commercial Packaging: Any packaging that is normal for the particular goods as they move in trade. As an example, a gasoline pump for gasoline.  (TMEP 904.03(c)) 
• Screen Shots: Screenshots or photographs or printouts are acceptable specimens for computer programs, movies, videos and audio recordings. (904.03(e)) 
• Displays: Point of sale materials such as banners, shelf-talkers, window displays, menus or similar devices are acceptable if it is associated directly with the goods offered for sale and it bears the trademark in a prominent manner. (TMEP 904.03(g)) 
• Catalogs: Catalogs are acceptable specimens if (1) it includes a picture or a sufficient description of the goods, (2) it shows the mark in association with the goods, and (3) includes information necessary to order the goods (such as phone number, mailing address, or e-mail address for placing orders). (TMEP 904.03(h)) 
• Manuals: Manuals that are part of a kit for assembling the product are acceptable specimens (TMEP 904.03(j)) 
• Websites:  A website that displays a product is an adequate specimen if:  
  • (1) it contains a picture or description of the identified goods; 
  • (2) it shows the mark in association with the goods – in a prominent manner; and 
  • (3) it provides a means for ordering the identified goods. (TMEP 904.03(i))  
    • Note: A website that merely advertises the goods is not acceptable. To be an acceptable specimen, the website must serve as a point-of-sale for the goods.  That is, it must allow the goods to be ordered through the website or provide information as to how to order the goods. 

EXAMPLE: Below is an example Specimen of Use Costco submitted in U.S. Reg. No. 2,196,093 for the black and red “Kirkland Signature” logo:

This trademark was registered for apparel. The Specimen of Use shows the exact mark on labels and hang tags attached to clothing.  

Specimens For Services: Specimens of Use for services are guided by many of the same rules as Specimens of Use for goods.  However, since there are no physical goods to place the trademark directly on, Specimens of Use for services have some different requirements. 

Specimens of Use for services must show the trademark as actually used in the sale or advertising of the services recited in the trademark application. 37 C.F.R. 2.56(b)(2). Acceptable specimens for may include (TMEP §1301.04(b)): 

• Brochures 
• Advertisements, 
• Billboards, 
• Handbills, 
• Direct-mail leaflets, 
• Menus (for restaurants) 
• Business Documents (such as letterhead and invoices, if they show the mark and refer to the relevant services).  

EXAMPLE: Below is an example Specimen of Use Costco submitted in U.S. Reg. No. 1,318,685 for the word “COSTCO” for use with “distributorship services in the field of discount general merchandise for participating members.”  The Specimen of Use shows the exact mark on the website and is used in association with the identified services, e.g. distribution of merchandise.  

It is common to submit screen captures of webpages as specimens today. Note that webpage specimens must include the URL and the date the webpage was accessed, otherwise the specimen will be rejected.  

SUMMARY: 

When submitting a trademark Specimen of Use, be sure what is submitted meets all the criteria for an acceptable Specimen of Use. Most importantly, the Specimen of Use must show actual use of the trademark in commerce, reflecting its real-world application. For goods, the trademark should appear on the product, packaging, or labels, while for services, the trademark should be visible in marketing materials or on your website.  

TIP FOR IMPROVED SUCCESS: One tip I have is if Examining Attorneys are inclined to reject a Specimen of Use, instead of submitting just one Specimen of Use, we like to submit multiple Specimens of Use. This gives the Examining Attorney a better understanding of how the trademark is used and it reduces the chances that all the Specimens of Use are rejected.   

If you have any questions regarding trademark specimens or need help with trademark registrations, trademark strategy or trademark litigation, please contact Chris Proskey, Intellectual Property Attorney at the BrownWinick. 

***Note: This blog post is not endorsed by Costco Wholesale. There is no connection, sponsorship, approval, or affiliation with Costco Wholesale. ***