Specimen Selection & Review

Specimens are required to show the mark as it is seen by the purchasing public and provide evidence for the registration. One of things the USPTO is looking for is to see if the mark is merely descriptive of the goods or services (common cause for rejection). 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-functioning as a mark.


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. 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.


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Acceptable Specimen       Supplemental Register  $199 Statement of Use

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Trademark Incontestability  TTAB Manual (TBMP)

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What Does Published for Opposition Mean?

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Acquired Distinctiveness  2(f) or 2(f) in part Extension of Time to Oppose

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