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What Are Trademark “Specimens”?
In order for a mark owner to register his / her mark with the United States Patent and Trademark Office (USPTO) on its Principal Register, a mark owner must demonstrate actual use of the trademark within the context of offerings to the public. These public offerings are called specimens1 and demonstrate how the mark owner truly uses the mark in connection with goods and services. Because a specimen is not considered to be a mark on its own, it must be more than just a picture of a mark or logo. Therefore, the owner must specifically show the mark as it is associated with the owner’s goods and services. This is because the specimen should be able to stand on its own without additional clarification from the owner, and the specimen should be clear enough so as to not be confused with other goods and services in the same industry. Essentially, submitting trademark specimen minimizes the chances that another company will assert the same mark for its company. The USPTO uses various rules in determining acceptable specimens for goods versus acceptable specimens for services, as addressed below.

What Trademark Specimens Are Acceptable For Goods / Products?
Specimens for goods generally show the mark as it is used on the actual goods. This includes, for example, on labels and tags, packaging materials, and instruction manuals. Acceptable specimens also include having the logo displayed on the product itself. It is often not acceptable for advertising materials (i.e. brochures, business cards, and catalogs) to serve as specimen for goods, unless it is clear that the materials are part of the sale presentation. Nor are items used to carry out an owner’s daily business (i.e. invoices, packing slips, shipping documents, and press releases) generally acceptable as specimens for goods.

What Trademark Specimens Are Acceptable For Services?
Specimen for services generally show the mark as it is used in the sale or advertising of the trademark owner’s business. This includes, for example, on brochures, flyers and promotional materials, advertisements in print or internet forms, restaurant menus, business documents (i.e. cards and letterhead), and websites (such that the website demonstrates an intent to sell its products, via a means for customers to order online for example, as opposed to merely advertising products).  In some ways, it therefore is much easier to show how a mark is used in connection with services than with goods.

When Are Trademark Specimens Required? 
Under the Trademark Manual of Examining Procedure (TMEP) 904.032, a trademark specimen is required under Section 1(a) use-based (i.e used in commerce) trademark applications, but is not required under Section 1(b) intent-to-use trademark applications at the time of application. This provides the owner-applicant broader flexibility in initially including goods and services that might eventually be deleted from the application at a later point in time. With an intent-to-use application, an owner must eventually submit specimens demonstrating its connection to the respective goods or services by filing an Amendment to Allege Use (AAU)3 or a Statement of Use (SOU)4. Under the Trademark Act, only one specimen for each class is required in an application.5 Owners may be required to file a Request To Divide to delete any unused goods or services indicated at the time of filing the application as unused goods or services in a class would fail the declaration requirement6.

Note: Keep in mind that before submitting your specimen for goods or services to the USPTO for approval, you must accompany the specimen with the verification statement under 37 C.F.R. §2.20. The statement declares that the specimen(s) were used in commerce at least as early as the filing date of the application7.

NOTES:

1. Trademark Manual of Examining Procedure, 1109.09(b) Specimens.
2. Trademark Manual of Examining Procedure, 904.03 Material Appropriate as Specimens for Trademarks.
3. Trademark Manual of Examining Procedure, 1104 Amendment to Allege Use Under §1(c) of the Act (15 U.S.C. §1051(c)).
4. Trademark Manual of Examining Procedure, 1104 Statement of Use Under §1(d) of the Trademark Act (15 U.S.C. §1051(d)).
5. Trademark Manual of Examining Procedure, 904.01 Number of Specimens.
6. Trademark Manual of Examining Procedure, 1110 Request to Divide an Application.
7. 37 C.F.R. §2.20 Declarations in lieu of oaths.

 

Heather Bowen serves as in-house counsel to a medical technology company in Midtown Manhattan. She recently completed a Northwestern Pritzker School of Law Post-Graduate Fellowship at Start Small Think Big in Harlem where she helped entrepreneurs and small business owners develop a solid legal infrastructure for their businesses. In addition, Heather is a member of the ABA Young Lawyers Division Intellectual Property Committee, Chair of the Publications Development Subcommittee of the ABA Trademark Litigation Committee, and member of the International Trademark Association’s Academic Committee. Heather Bowen can be reached at heatherbowen55@gmail.com.