One of the bigger issues that our clients grapple with is understanding Specimens of Use which must be provided to the Trademark Office for both Actual Use and Intent to Use Applications. As defined:
- A service mark specimen must show the mark as actually used in the sale or advertising of the services recited in the application. Acceptable specimens may include newspaper and magazine advertisements, brochures, billboards, handbills, direct-mail leaflets, menus (for restaurants), and the like. Business documents such as letterhead and invoices may be acceptable service mark specimens if they show the mark and refer to the relevant services.
- For a trademark application, the specimen must show the mark as used on or in connection with the goods in commerce. A trademark specimen should be 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.
This means that your specimen must show how you actually use your trademark in commerce on or in connection with the goods, or in the sale or advertising of the services. If your specimen is unacceptable, the Trademark Office will refuse registration. Common reasons include:
- The specimen does not show use of the applied-for trademark with any of the relevant goods or services.
- The specimen is a printer’s proof of an advertisement for services.
- The specimen is a digitally created or altered image of the goods.
- The specimen is merely advertising material for goods.
- The specimen is merely a picture or drawing of the trademark.
- The specimen is a photocopy of the drawing.
- The specimen is a webpage that does not include the URL or date accessed.
For example, you own a t-shirt business, but don’t realize the specimen you submit must show use of your trademark on a label, hangtag, or other appropriate material. Instead, you find a stock image of a t-shirt hangtag online, superimpose your trademark onto the picture, and submit that as your specimen. Your application will be rejected because the submitted specimen is a mockup or digitally created image. To proceed, you will need to submit a specimen that shows use of your trademark on an actual label or hangtag attached to the goods, packaging for the goods, or an electronic point of sale display for the goods.
The Trademark Office will also refuse registration if your specimen does not show the trademark functioning as a trademark. Common reasons include:
- The applied-for trademark is mere ornamentation.
- The applied-for trademark identifies the name or pseudonym of a performing artist or author.
- The applied-for trademark identifies the title of a single creative work.
- The applied-for trademark identifies a character from a creative work.
For example, The Magic School Bus® is a registered trademark for a series of children’s picture books. The trademark was shown on book covers for a series of different books and in advertisements, and evidence showed the trademark to be widely recognized as a source identifier for the book series, not just for a single book in the series.