Trademark 101 Part 4:
How to Choose a Good Specimen of Use
A good specimen of use clearly shows (1) use of the trademark (2) in interstate commerce (3) in association with the goods/services claimed in the relevant application or registration.
A specimen of use is “real-life evidence” showing your use of the trademark in interstate commerce (offering your goods/services across state lines) in association with the goods / services claimed in the trademark application or registration. The purpose of the specimen is to prove that you are currently using the mark in commerce with the claimed goods / services.
You must submit a specimen of use (usually a PDF file) to the U.S. Patent and Trademark Office (“PTO”) for each International Class of goods/services claimed in the trademark application or registration at the following times:
- With a use-based application
- With a Statement of Use filed for an intent-to-use application
- With requests for renewal filed every 10 years after registration issues.
A specimen of use must:
- Display the trademark exactly as portrayed in the application or registration
- Including the same spelling, font, color, orientation, design element(s), overall appearance, etc.
- Display the mark as actually used in interstate commerce (offering goods/services across state lines)
- “Mock ups” / proofs / drafts are not acceptable.
- Use by third parties or in press releases sent to media outlets are not acceptable.
- And in association with the goods/services claimed in the application or registration
Specimens are not required to depict every item included in an International Class.
Some limited exceptions to the “across state lines” requirement exist for certain services (e.g. restaurant and hotel services); these limitations should be discussed with an attorney.
Acceptable specimens differ depending on the goods or services claimed.
For goods, use should be at the “point of sale” – i.e., a point at which consumers can see
- the trademark AND
- the goods themselves AND
- a means of purchasing them
Advertisements are sufficient only if they show an immediate means of purchase, such as a website address or phone number.
Examples of good specimens for tangible goods are:
- Tags or labels affixed to the goods
- Sale displays, g. display cabinets
- Product packaging or container, g. the box the item is housed in
- Web pages with a “buy now” or “shopping cart” button
Inquiry information, “contact us,” “more information,” company address or phone numbers, etc. are not sufficient in and of themselves.
For services, advertising or explanations of the services may be sufficient (as well as at a “point of sale” display).
Examples of good specimens for services are:
- Flyer, brochure, promotional material advertising the services
- Screenshots of websites advertising or explaining the services
- Image from trade shows, conventions, or meetings advertising the services
It may not seem logical, but the PTO considers downloadable software to be a tangible good and SAAS (software as a service) / PAAS (platform as a service) to be a service.
For downloadable software, a website displaying the trademark is acceptable only if it displays a means to download or purchase the software from the website. Mere advertisements of the software without a means of downloading, purchasing, or ordering the software is not acceptable.
Specimens for SAAS/PAAS must show relation to the both the mark and the service. For example:
- Questionable specimen: Mark on sign-on screens providing access to the services.
- Good specimen: Mark on sign-on screen AND mark on screenshot of the services being rendered (any personal or proprietary data may be redacted)
- Good specimen: Mark used directly in association with a textual description of the services
- Specimens for PAAS must show relation of the mark with the services provided by the platform, not the software rendering those services.
Software that is in “beta” may or may not be acceptable; discuss this issue with an attorney.
The PTO will reject specimens that it deems not to meet the requirements explained above. Some common reasons specimens are rejected include:
- Specimen displays a mark different than what is depicted in the application or registration
- Specimen displays a mark used with goods/services different than those claimed in the application or registration
- Advertising material as specimen for trademarks tangible goods (Advertisements are acceptable specimens for services)
- Specimen is a “mock-up,” draft, or rendition of an “in-house” use of the mark, something that is not available to the public
- Specimen is from a third party’s use of the mark (g. a news article or review)
- Specimen is from a press release sent exclusively to news media rather than published for advertising to the public
- Trademark placement is not clearly associated with the claimed goods / services (g., the mark is displayed on the home page of a website but not on a page where the relevant services are discussed.
Since 2001, our team has helped clients safely use and protect their company names, brands, logos, and taglines. We have represented:
- Family-owned businesses
- Entrepreneurs and individuals
- International companies
- Educational institutions
Our clients come from a range of industries, including
- Brick-and-mortar retailers
- Online retailers
- Consultants and other service providers
- Software and video-game companies
We appreciate that each client’s needs, goals, and resources are unique, and we work with each client to assist them in choosing the options that are right for them.
Among other things, we help our clients:
- Vet the trademarks and other identifiers they want to use and assess any risks in using them
- Strategize and secure the optimum protection available for the client’s trademarks
- Stop others from infringing the client’s trademarks
- Defend against charges of infringement
- Negotiate co-existence and licensing agreements when necessary to protect the client’s rights
In one brief, free phone call, we will:
- Explore your situation and discuss your goals
- Point out any risks you may face
- Identify the options available to you
- Discuss the pros and cons of those options
- Help you make the decisions that are best for your business
- You gain trademark rights simply by using a trademark. Registering your trademark with the Patent and Trademark Office broadens your rights, but it’s not a requirement to obtaining rights.
- Therefore, not finding the mark you want to use in the Patent & Trademark Office database doesn’t mean your mark is safe to use; if someone else is already using it (or a mark similar to yours), they may be able to prevent your use, even without a registration.
- Minor variations in someone else’s trademark probably aren’t enough to keep you from infringing on their mark.
- It is difficult, and may be impossible, to protect a trademark that describes your product.
- Failing to find a particular trademark with a Google search doesn’t necessarily mean it’s safe for you to use the mark.
- Registering your company name with the Secretary of State does not ensure your right to use the company name as a brand or trademark (or to prevent others from doing so).
- Registering a domain name does not give you the right to use that name as a brand or trademark (or to prevent others from doing so).
- Registering your trademarks does give you much broader and stronger rights in them.
Gretchen McCord advises our company on global matters of trademark strategy, registration, disputes, and negotiations, with a focus on litigation avoidance. Gretchen has consistently demonstrated mastery of her practice of law in these areas and has been artful and successful in resolving matters ranging from addressing investor representations and warranties to resolving international trademark disputes. Additionally, Gretchen delivers real value for the price, not just because she competes by charging rates below those of large law-firms, but because interacting with Gretchen is fast, easy and reliable, thereby reducing her billable time (the primary cost of engaging legal counsel).