What is an Acceptable Trademark Specimen?

Filing a trademark application can be a complex process. In order to successfully register your mark, the United States Patent and Trademark Office (USPTO) mandates that you submit a trademark specimen along with your paperwork. This is a required part of the trademark registration process. Failure to send an acceptable specimen can not only result in delay — but in some cases, you might need to file a new application and potentially lose your priority right to the mark.

What is a Trademark Specimen?

All trademark applications that are based on “use in commerce” or “intent to use” require a specimen. A trademark specimen is a sample of your trademark that demonstrates how it is used in commerce. In other words, it serves as evidence regarding how you use the mark in the marketplace in connection with the goods and services listed in your application. The specimen is also what consumers will see and will associate with the goods and/or services.

What Types of Trademark Specimens are Acceptable to the USPTO?

A trademark specimen can come in a wide variety of forms. For goods, it could be a photo showing the product itself, or the label that is attached to the goods displaying the mark. It might also be a container, packaging, or website that shows the trademark. When it comes to a trademark specimen for services, you might provide the USPTO with an advertisement, brochure, website printout, or promotional and marketing material that shows how your trademark is used for the services. It could also come in the form of a business sign or service vehicle that displays the mark.

Under the USPTO’s guidelines, an acceptable trademark specimen must meet the following criteria:

• The specimen must be a real example of how your trademark is used in commerce.
• The specimen must show how the trademark is used in connection with the goods or services listed in your application.
• The trademark specimen must be the same one depicted on your drawing.
• The specimen must show your specific use of the mark.
• The specimen must be an appropriate type based on whether the mark is for goods or services.
• The specimen must show the trademark being used in a way that directly associates the mark with the goods or services.
• The specimen must show your trademark being used in a way that consumers would perceive as a source indicator.
• The specimen in your application must not be a mockup, digitally altered image, or rendering of intended packaging for the product.
• If a screenshot is used to show the specimen, it must include the website URL and date the site was accessed or printed.
• The specimen must be attached to the TEAS form and meet the USPTO’s specific formatting requirements.

Unacceptable specimens that don’t meet the USPTO’s requirements can include those that do not show the trademark clearly, in its entirety, or it is a variation of the mark. The USPTO can also refuse to accept a specimen that does not show your own use of the mark — for instance, if you submitted a specimen that appeared in a press release that was meant specifically for the media. A specimen will also be rejected if it is not in actual use in commerce.

A specimen refusal can be overcome in many cases. For example, if you failed to submit an appropriate specimen, you may need to submit a better example to the USPTO. In the event the specimen was rejected because it was not legible, you might just need to send a new copy of the original specimen.

How Do You Submit a Trademark Specimen?

Since trademark filings are done electronically, you should not submit a physical specimen with your USPTO application. Rather, you should send a photograph, screen shot, or printout of how the specimen is used. One specimen must be provided for each class of goods or services listed in the application. The USPTO may request additional specimens if necessary to examine your application.

It is important to be aware of when you must submit your trademark specimen to the USPTO. For use-in-commerce trademark applications, the specimen should be included when you submit your initial application. With an intent-to-use application, the specimen must be submitted after your initial application has been filed. Specifically, when you’re filing an intent-to-use application, the specimen can be submitted either before your application is approved for publication by filing an Amendment of Allege Use — or after you’ve received a Notice of Allowance due to filing a Statement of Use.

All trademark owners must provide the USPTO with a specimen when they file their Section 8 or 71 affidavit or declaration of use between the fifth and sixth year after registration. A specimen must also be filed every ten years from the date of registration.

Contact an Experienced Trademark Attorney

The trademark registration process can be complex, and it is essential to make sure your application and specimen are submitted correctly to avoid unnecessary delay or rejection of your registration. Located in Ann Arbor, Michigan and serving clients nationwide, the Trademark Lawyer Law Firm, PLLC works with business owners and entrepreneurs regarding a variety of trademark matters, including all aspects of the application process. Contact us today to schedule a complimentary 15-minute consultation to learn how we can help.