Trademark practitioners devote a lot of time thinking about and discussing the distinctiveness of marks and whether a likelihood of confusion exists. Of course, there are other important issues. One such issue is trademark specimens. This blog post discusses Section 904.07(a) of the Trademark Manual of Examining Procedure (TMEP), entitled “Whether the Specimen Shows the Mark as Actually Used in Commerce.”
The Importance of Proper Specimens
A specimen proves that you—or someone acting on your behalf—is using a trademark in commerce. Specimens are a requirement for registration. If you file an application based on current trademark use (i.e., Section 1(a)), you submit one or more specimens at the time that you file your application. If you file an application based on an intent-to-use a mark in the future (i.e., Section 1(b)), you submit one or more specimens at a date following your filing date but prior to your registration.
Common Pitfalls in Specimen Submission
TMEP Section 904.07(a) provides a non-exhaustive list of “use-in-commerce” problems that examining attorneys often encounter. Here is the list, with explanations.
· No specimen is submitted
Explanation: Applicants sometimes forget to attach their specimen(s) or there is a technical error during submission.
Example: Joanna files a trademark application for her new line of artisanal jams, JAMMIN’ GOOD, but in her haste, she forgets to upload images of her jam jars showing the mark.
Solution: Always double-check that your specimen is attached before submitting. If you receive an Office Action for this issue, submit the specimen along with an explanation, if necessary. The USPTO might require a verified statement that the specimen was in use as of the filing date.
· The applied-for mark does not appear on the specimen
Explanation: The specimen must show the exact mark you are applying for. Even minor variations can be problematic.
Example: Sarah applies for the mark GREENLEAF GARDENS but her specimen shows Green Leaf Jardin. In this example, the marks are different in at least two respects:
The applied-for-mark does not contain a space between “green” and “leaf.”
The applied-for-mark contains the word “gardens,” whereas the mark in the specimen contains the word “jardin.”
Solution: Ensure your specimen matches your mark exactly. Applicants are often surprised to learn that the punctuation must match. If it doesn’t, consider either amending your mark (if appropriate) or submitting a new specimen that matches the applied-for mark. Amendments are often not permitted. An amendment cannot materially change the mark. Be especially cognizant of this issue when filing an application on an intent-to-use basis. If you are considering alternative marks or variations, make sure you file an application for the mark you intend to use.
· The specimen does not show use of the applied-for mark on or in connection with any of the relevant goods or in the sale or advertising of the services
Explanation: The specimen must show the mark used on or in connection with the goods/services listed in your application.
Example: Tom applies for the mark KITCHEN MASTER for chef’s aprons, but his specimen only shows the mark on a line of cleaning products he sells.
Solution: Submit a new specimen showing the mark used in connection with the actual goods or services, such as tags or product labels for chef’s aprons bearing KITCHEN MASTER.
· The specimen is a printer’s proof of an advertisement for services
Explanation: A printer’s proof of an advertisement is not acceptable because it does not show actual use in commerce.
Example: Lisa submits a printer’s proof of a magazine ad for her YOGABLISS yoga studio.
Solution: Instead, submit the actual published advertisement, or other materials such as brochures, website screenshots, or signage actually used to promote the services.
· The specimen is a digitally created/altered image or mockup of the goods
Explanation: Digitally created or altered images of your goods are not acceptable. The USPTO needs to see actual use, not a concept.
Example: Mike submits a beautifully rendered 3D model of his cardboard boxes that prominently display the mark ECOPACK.
Solution: Submit photographs of the actual packaging as it appears in the marketplace.
· The specimen is unreadable/illegible
Explanation: If the examining attorney cannot read or clearly see your mark on the specimen, it is not acceptable.
Example: Chen submits a blurry photograph of his QUICKBITE food truck, where the mark is unintelligible.
Solution: Submit clear, high-resolution images that clearly show the mark. If submitting screenshots, ensure they are of sufficient quality.
· The specimen is mere advertising material for goods
Explanation: For goods, advertising materials alone are not enough. You need to show the mark on the goods themselves or on packaging.
Example: Emma submits a flyer advertising her LUXELEATHER handbags.
Solution: Submit photos of the actual handbags with tags showing the mark, or the packaging for the handbags bearing the mark.
· The specimen is merely a picture or drawing (or photocopy) of the mark
Explanation: A simple picture or drawing (or photocopy) of your mark is not a specimen. It needs to be shown in actual use.
Example: Alex submits a sketch of his COOLCAT logo for a line of pet accessories. The trademark examining attorney reviews the specimen and is left wondering, “where are the pet accessories?”
Solution: Alex should submit photos of the actual pet accessories or their packaging bearing the mark.
· The specimen is an electronic display associated with the goods (e.g., an online catalog, or web page display for goods), and fails to include ordering information or pricing
Explanation: Point-of-sale displays can be acceptable for trademarks used to identify goods. For online catalogs or webpages, you must include ordering information or pricing. Without these, it is not considered a point-of-sale display.
Example: Olivia submits a screenshot of her VINTAGEVOGUE online store, but it only shows product images without any way to purchase.
Solution: Submit a screenshot that includes the mark, product images, and either a “Buy Now” button, shopping cart feature, or listed prices and a mechanism for ordering.
· The specimen is a non-electronic point of sale display and fails to show use of the mark as a “display associated with the goods”
Explanation: Non-electronic point-of-sale displays must clearly show the mark as a “display associated with the goods.”
Example: David submits a photo of a store shelf with his FRESHBREW coffee, but the mark is only visible on a small price tag (and the name on the tag is not visible in the photo).
Solution: Submit a photo of a larger display sign or banner that prominently features the mark and is clearly associated with the goods.
What Happens If Your Specimen Falls Short?
If the examining attorney believes any of these issues exist, the examining attorney will issue an Office Action refusing registration under Sections 1 and 45 of the Trademark Act. Do not panic. You can usually correct the issue.
Key Takeaways
Specimens are necessary evidence of your mark’s use in commerce.
Specimens must show the exact mark applied for, used on the exact goods/services listed.
Real-world use is key—mockups, drawings, and concepts often do not suffice.
Choose your specimens carefully based on whether the mark is identifying goods, services, or both.
If refused, you can submit a substitute specimen. Try to submit proper specimens the first time.
Remember, a strong trademark application requires more than a distinctive mark. By understanding specimen requirements, you are one step closer to a successful registration. If you would like to discuss a trademark application or specimen issue with an experienced trademark attorney, schedule a consultation here.
