How Do I Know What Specimen to Submit With My Application?

Specimen Selection & Review

Specimens are required to show the mark as it is seen by the purchasing public and provide evidence for the registration. USPTO trademark examiners look to see if the specimen shows the trademark being used in a merely descriptive way or other reasons for refusal. Marks must be displayed in a manner so the consumer recognizes it as a mark and links it to the goods or services,  or in other words-does the specimen show the trademark functioning as a trademark.


Acceptable Specimens

GOODS (for a trademark): Acceptable specimens for goods (TMEP 904.03) include such items as “a label, tag, or container for the goods, or a display associated with the goods. A photocopy or other reproduction of a specimen of the mark as actually used on or in connection with the goods is acceptable.”


SERVICES (for a service mark): Acceptable specimens for services normally consist of advertisements, displays, or signage (TMEP 1301). A service mark specimen must show use of the mark “in the sale or advertising of services.”  Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56.  Therefore, a specimen is unacceptable if it does not show use of the service mark in relation to the identified services.  There must be a direct association between the mark sought to be registered and the services specified in the application, with sufficient reference to the services in the specimen to create this association.  In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB 1999); In re Adair, 45 USPQ2d 1211 (TTAB 1997); In re Restonic Corp., 189 USPQ 248 (TTAB 1975); TMEP §§1301.04 et seq.


DRAWING SIZE and SPECIMEN SIZE: If filing for a stylized or design mark, ensure that before even attempting to begin the electronic filing process that the required JPG image file is in the proper pixel range (between 250 and 944 pixels, in any direction). If an image for a specimen, the pixel range is not an issue; instead, ensure that the overall size of the attachment does not exceed 5 megabytes.


Unacceptable Specimens

Example of a poor specimen: One typical rejection of marks for t-shirts and hats is showing the potential mark decorating the front of the item. According to USPTO rules, this type of use is ornamental  and not an indication of the source of the goods, the source would be on a tag or somewhere less conspicuous. Unless a better specimen and use of the mark are provided to the USPTO, this type of specimen will lead to the mark achieving no registration or only Supplemental Registration because of ‘Ornamental Use of the Mark.’

Note: A Supplemental Registration is a significant loss of rights (common law rights as well), especially if it could have been avoided by using a better specimen. See Comparison of Principal Register and Supplemental Register. A registration on the Supplemental Registration is an admission that the mark is not inherently distinctive, a slip in the foothold of  common law rights. See Inherently-Distinctive.com for more information on the importance of being inherently distinctive and for a quiz on Domain Names.


Another example of a poor specimen is a copy of an advertisement or label that already contains a ® even though the registrant is now just applying for the federal registration for first time. Registration in a state of the United States does not entitle a person to use the federal registration notice. Du-Dad Lure Co. v. Creme Lure Co., 143 USPQ 358 (TTAB 1964).

Improper use of a federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud. TMEP 906.02 Improper Use of Registration Symbol.


A copy of an applicant’s logo is an unacceptable specimen as evidence of actual trademark use unless it is a label. The applicant must submit a specimen showing the mark as it is used in commerce in relation to the goods.  37 C.F.R Section 2.56.


A service mark specimen must show use of the mark “in the sale or advertising of services.”  Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56.  Therefore, a specimen is unacceptable if it does not show use of the service mark in relation to the identified services.  There must be a direct association between the mark sought to be registered and the services specified in the application, with sufficient reference to the services in the specimen to create this association.  In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB 1999); In re Adair, 45 USPQ2d 1211 (TTAB 1997); In re Restonic Corp., 189 USPQ 248 (TTAB 1975); TMEP §§1301.04 et seq.


The right to register a mark with the USPTO is determined by both the application and the mark. A proper specimen  is a vital part of the application. Many  trademark refusals can be avoided or overcome by using Not Just Patents ® Trademark Services. Call us and ask for examples of how we can help at 1-651-500-7590  .


What Does ‘Use In Commerce’ Mean For a Trademark?


What is the Definition of Use in Commerce? The definition of use in commerce with regards to trademarks is found in 15 USC 1127:

Mark. The term “mark” includes any trademark, service mark, collective mark, or certification mark. Use in commerce. The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce—

(1) on goods [products] when—

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.


Does Registering For a URL (domain name) Using My Trademark Qualify As A Use In Commerce? Just using a name as a domain name is not a trademark use.

TMEP §1215.02: A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier. The mark, as depicted on the specimen, must be presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website. See In re Roberts, 87 USPQ2d 1474, 1479 (TTAB 2008) (finding that irestmycase did not function as a mark for legal services, where it is used only as part of an address by means of which one may reach applicant’s website, or along with applicant’s other contact information on letterhead); In re Eilberg, 49 USPQ2d 1955, 1957 (TTAB 1998).


Is the Date That I Registered My Domain Name My First Use in Commerce? Only if your web site is also using the domain name as a trademark in a valid manner already. Web pages that do not show a proper use in commerce are common refusals as specimen refusals. The date that a domain name was registered may show the first use of the mark anywhere if there was  appropriate content associated with the name at the time.


Does My Letterhead Count as a Use In Commerce? Maybe depending on use. If the letterhead just identifies the trade name (business entity), it may not function as a use in commerce. Excerpt from TMEP §1202.01: In re Diamond Hill Farms, 32 USPQ2d 1383 (TTAB 1994). DIAMOND HILL FARMS, as used on containers for goods, found to be a trade name that identifies applicant as a business entity rather than a mark that identifies applicant’s goods and distinguishes them from those of others.


Trademark Use In Commerce [filing basis 1a] Must Be Open and Public (and not just in the planning-to-use stages).

"Mere adoption (selection) of a mark accompanied by preparations to begin its use are insufficient . . . for claiming ownership of and applying to register the mark. “At the very least," in order for an applicant to meet the use requirement, "there must be an open and notorious public offering of the services to those for whom the services are intended." Aycock Engineering, Inc. v. Airflite, Inc., 560 F. 3d 1350 (Fed. Cir. 2009). (internal citations omitted)


Is having my trademark on a business plan a use in commerce? [A] mark is not "used" when it is presented to a potential customer as part of a business plan; it must be employed in commerce such that it distinguishes the goods or services of a seller from others in the marketplace. McCarthy on Trademarks & Unfair Competition § 16:1 (4th ed. 1996); see also Allard Enters. v. Advanced Programming Res., 249 F.3d 564, 571-72 (6th Cir. 2001) (distinguishing federal registration of a mark from common law ownership of a trademark). Welsh v. Big Ten Conference Inc., 89 USPQ2d 2035 (N.D. Ill. 2008).


How Do I Show Use In Commerce for My Product? Specimens on Labels, Containers or Displays Show Use In Commerce for Trademarks (goods or products).

According to the TMEP, "a label is an acceptable specimen" where the mark "is applied to the goods or the containers for the goods," even by shipping or mailing labels. § 904.03(a). On containers, "a showing of the trademark on the normal commercial package for the particular goods is an acceptable specimen." § 904.03(c). Thus, a product box that bears the trademark, but does not display a picture of the goods or allow customers to see the goods, may be an acceptable specimen. "Solid products have greater flexibility, inasmuch as the mark may be impressed directly on them during the manufacturing process. Of course, use on their containers or associated displays is equally acceptable.". As to displays associated with goods, the Board has found that a display bearing a trademark for chemicals at a trade show booth was an adequate specimen, even though the chemicals were not present or visible at the booth. . .  Thus, tangible specimens—whether labels, containers, or displays—can show use in commerce by describing the goods in sufficient detail in relation to the marks. (internal citations omitted)

In re Sones, 590 F. 3d 1282 (Fed. Cir. 2009)


How Do I Show a Use In Commerce for My Services? Acceptable specimens for services normally consist of advertisements, displays, or signage (TMEP 1301). A service mark specimen must show use of the mark “in the sale or advertising of services.”  Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56.  Therefore, a specimen is unacceptable if it does not show use of the service mark in relation to the identified services.  There must be a direct association between the mark sought to be registered and the services specified in the application, with sufficient reference to the services in the specimen to create this association.  In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB 1999); In re Adair, 45 USPQ2d 1211 (TTAB 1997); In re Restonic Corp., 189 USPQ 248 (TTAB 1975); TMEP §§1301.04 et seq.


Are There Other Ways Use In Commerce Can Be Accomplished? Use In Commerce for Goods Can Be Established Is By Transportation.

The requirement for public awareness of the mark is a consistent theme. "The use in commerce required for obtaining a federal registration is generally congruous with the required use of a mark for obtaining ownership under the common law.... Transportation in commerce generally constitutes a `use' without a sale as long as the use is `open and notorious' and before potential customers." Societe de Developments et D'Innovations des Marches Agricoles et Alimentaires-SODIMA-Union de Cooperatives Agricoles v. International Yogurt Co., Inc., 662 F.Supp. 839, 853 (D.Or., 1987). See also Allard Enterprises, Inc. v. Advanced Programming Resources, Inc., 146 F.3d 350, 357-60 (6 Cir., 1998); McCarthy on Trademarks and Unfair Competition, Vol. 3 § 19:118 (" `Transportation' as an alternative to `sale,' will usually require some element of open or public use. It seems clear that `transportation,' as an alternative to `sale,' requires the same elements of open and public use before potential customers. Thus, purely intra-company shipments... do not constitute bona fide shipments to satisfy the `transportation' alternative.").

Gen. Healthcare Ltd. v. Qashat, 254 F.Supp.2d 193, 198 (D.Mass.2003)


My Business is Just Starting Up and We Are Not Making Much Money Yet. Does That Qualify As A Use In Commerce? Trademark Use in Commerce is Not Limited to Profitable Enterprises.

Slow commercial progress, or absence of income or profit, is not a ground of cancellation of registration. Use in commerce under the Lanham Act is not limited to profit-seeking uses. The Lanham Act authorizes cancellation of abandoned marks, but a mark is not abandoned because the proprietor is encountering difficulties in the business. Aycock Engineering, Inc. v. Airflite, Inc., 560 F. 3d 1350 (Fed. Cir. 2009). (internal citations omitted)


If A Trademark is Abandoned, Can I Start Using It? Lack of Use in Commerce (nonuse for three years with no intent to resume) Results in Abandonment of a Mark Leaving Room For Another to Use the Mark. [Note that the word ‘Abandoned’ in this context actually means NOT IN USE rather than an application or registration being DEAD which is a failure to have an active registration.]

"An intent to resume use of the mark formulated after more than three years of non-use cannot be invoked to dislodge the rights of another party who has commenced use of a mark—thereby acquiring priority rights in that mark—after three years of non-use." Imperial Tobacco Ltd., Assignee of Imperial Grp. PLC v. Philip Morris, Inc., 899 F.2d 1575, 1581 (Fed. Cir. 1990).

Once a mark is abandoned, it enters the public domain and another party can appropriate it. Indianapolis Colts, Inc. v. Metro. Baltimore Football Club Ltd. P'ship, 34 F.3d 410, 412 (7th Cir. 1994). With no other parties using a mark, the new user becomes the senior user of the mark. "It is axiomatic in trademark law that the standard test of ownership is priority of use." Sengoku Works v. RMC Int'l, 96 F.3d 1217, 1219 (9th Cir. 1996).

See Specht v. Google Inc (N.D. Ill., 2010).


Call us with more questions at 1-651-500-7590.  See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.


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