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.
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.
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
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.
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
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).
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