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
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. 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 specimenis 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.
Call 1-651-500-7590 or email firstname.lastname@example.org or ContactTrademark.com for
Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent
or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.
For more information from Not Just Patents, see our other sites:
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Not Just Patents LLC and its client. Past performance is no guarantee of future results.