Trademark Specimen: Proving Use of Your Mark in Commerce
To get a trademark registration you must prove to the United States Patent and Trademark Office (USPTO) that you are using the mark “in commerce.” This is accomplished by submitting a “specimen.” What does that even mean?
This article will explain this critical trademark concept and this will give your application a higher chance of success.
Trademark registrations are awarded to people who are actually selling and marketing their products and services in the marketplace, and you cannot get a trademark registration from a brilliant idea alone. The mark must be visibly present on your product or its packaging, or on your advertising materials.
What is a Specimen?
Regardless of whether your business provides products or services, you must prove you are using the mark in commerce, and the evidence you submit is called a specimen. You cannot get a registration without an acceptable specimen, so you need to plan this out before you apply.
Specimen requirements differ depending on whether you sell a product or a service.
Specimens for Products
If you sell any kind of tangible good, then your mark must be present either on the product itself, on the packaging, or on a display (like a cardboard end cap).
Suppose you manufacture apparel. Your mark must be visible either on a product tag, a price tag, or on the packaging. It is generally insufficient to put the mark on the apparel itself, as it might be deemed “merely ornamental.” What if you resell apparel and are not a manufacturer? Simply put your mark on the price tag.
Suppose you manufacture jewelry or something small, like a trinket or component part, where it might not be feasible to print or engrave your mark on the product itself. No problem. Put your mark on the packaging. Your product stands out more with attractive packaging, and that is a great opportunity to promote your brand.
Chances are that as you read this article you are either holding a product or something is in reach bearing a trademark. As I sit here at my desk typing, I see a microphone, a mouse, keyboard, a monitor, a webcam, an aluminum can, a pen, lip balm, and a fidget spinner (don’t judge me!). Every one of these products bears the trademark of the manufacturer. If one of these products were yours, you would simply submit photos of the product bearing the mark. I recommend getting a zoomed in photo so you can clearly see the mark, plus a zoomed out photo so the entire product is visible. Look around your space as you read this article and count how many trademarks you see. Imagine taking a photo of that product such that you can see the entire product and the mark. That is how you would submit a specimen.
For products, you do not need a photo of the product in the state of being for sale, as you do not need a photo of the product in a physical display nor an online listing. A photo of the product bearing the mark should suffice by itself. You attest elsewhere in the application that it is being used in commerce and you must provide a date when you first started using the mark.
The product itself or the packaging otherwise do the heavy lifting to prove use in commerce. You simply attach the photo to the trademark application in .pdf or .jpeg format, and you should be fine.
Specimens for Services
If you provide a service instead of product sales, like legal, accounting, tax preparation, construction, coaching, consulting, real estate, medical services, etc., then the specimen is vastly different from products.
Specimens for services focus on advertising, as there is no tangible product bearing the mark. Advertising can include many things, like a flyer, brochure, pamphlet, business card, or website. 99% of the specimens I submit for services come from some kind of website. Clients occasionally send me pdfs of brochures or flyers, but the overwhelming majority of service specimens are website screenshots.
Unlike a product photo, which generally speaks for itself, it is insufficient to simply have a website with your mark. You need to publish copy that describes your service. Your screenshot must include sufficient descriptive copy to support the business classification(s) you selected. The copy needs to contain sufficient substance and specificity that you can prove you are using the mark in commerce for the classification(s) you selected (i.e., legal services).
I’ve gotten hundreds of applications approved, and have walked into plenty of office action denials, so I would advise to have your mark featured in multiple places on the page. Your odds of success are simply higher, as the examiner might reject one image but accept another, and the accepted image could carry the whole application.
Using Your Mark Like a Trademark
I’ve had to explain and write this more times than I can count. You must use your trademark like a trademark, or your specimen will be rejected. What does this mean?
To use your mark like a trademark, it needs to stand out from the rest of the copy on your website. Use it centered and as a header, use bold type and/or feature it in larger type size than the rest of the copy. No need to overthink this, but if you have it centered and as a page or section header, and have it bigger than the descriptive copy, then you should be fine.
The worst thing you can do is to bury your mark in a wall of text. Your mark must stand out and be separate from everything else, even if it is just a couple hard returns. A mark inside a sentence or paragraph won’t work, as that is merely copy, not a trademark. What if I bold or underline the mark, inside a paragraph? That won’t work. Ask me how I know…
See how the section headers in this article are centered and in bold? That would generally be fine, but I recommend making it a larger type size as well.
If your trademark is “Trademark Superstar,” then using it inside a paragraph won’t work. Do this instead:
Trademark Superstar
… standing out and separate from the other copy, followed by descriptive copy. That is how you properly use your trademark in commerce, and that is how your specimen gets accepted.
The Specimen Must be Identical to the Trademark
Your TM application will require you to identify the mark with specificity. It is case-specific and everything counts, including all letters and punctuation. Your trademark application will provide a field for you to identify the mark with precision. Your specimen must mirror this mark exactly.
For example, if you type “Boomtastic!” as the mark to be registered, then your specimen must include “Boomtastic!” If your specimen only shows “boomtastic,” then you’re going to have a problem.
The same goes with extra words. If your mark is “Master Biz Coach,” then your specimen cannot use “Master Biz Coach Academy.” The specimen must match the mark with precision. In the alternative, you can use “Master Biz Coach™ Academy,” as this signals the extent of the claimed mark.
If your specimen does not match the applied-for mark exactly, then the specimen will be rejected. This is case-specific and punctuation-specific. Do not be casual or sloppy here, as you are generally locked in once you apply. Whatever mark you seek to protect, you need to ensure that the specimen is correct, and the time to do this is before you apply, not later after you’ve gotten an office action denial.
When to Submit a Specimen
This is simple enough. If you are applying for a mark that is already in use, known as a “1(a),” then specimens must be included with the application. You will upload the images in .pdf or .jpeg format (any other format, such as .png, will not upload), and identify the exact date the screenshot was taken.
I file 1(a) applications when my clients already have content live, or they can get a site up quickly. We then review the website before even beginning the application process, and recommend any changes to format or copy before we file.
If you aren’t yet using the mark in commerce, but want to get the application process started while you figure things out, then you can do an Intent to Use application, known as a “1(b).” Once you clear the application review stage, followed by the publication stage, you will then get a Notice of Allowance, which begins a six-month window to submit your specimen. This can be extended up to three years. The specimen is submitted through a filing called a Statement of Use. I will not quote the filing fee because it changes every few years, but this fee is multiplied by the number of classifications in the application.
How to Submit Specimens for Service Marks
If you have an actual photo of a product, then submission is easy during the application (or Statement of Use) process. You simply upload the image when prompted during the application.
The process requires a bit more work for service marks. If you are submitting any kind of website screenshot, regardless of whether it is a website, landing page, or social media, you need to ensure the image is cropped so the URL and the date are visible on the screen. I therefore recommend closing any unnecessary applications or anything visible that could distract from the application. This will become public record in perpetuity, even if the application is denied.
This date stamp requirement began in February 2020, and it occurred to combat an influx of fraudulent specimen images, largely coming from China. (An examining attorney told me this on a call.) If you submit a screenshot specimen that does not contain both the URL and the date, then you will get an office action letter rejecting the specimen.
Screenshots are automatically downloaded to your device in .png format (on my PC anyhow), so be sure to convert the file to .pdf.
What Happens if the Specimen Gets Rejected?
Rejections are communicated through a document called an “office action.” Some office actions can be overcome, while others are the kiss of death. Many issues can cause an office action, and a rejected specimen is among them. Problems with the specimen are curable and can be overcome, but you’re going to have to work to fix the problem.
If your specimen is rejected because of a problem with cropping, or if the copy is deficient, but you have additional existing copy to use elsewhere, then this should be an easy fix. It’s better to get it right the first time, but these things happen sometimes.
However, if your specimen is rejected because your mark is buried in a wall of text, it does not match the applied-for mark exactly, or if the copy describing your services is vague or does not match the classification, and you do not have other content that existed at the time you filed the application, then you have an annoying problem. This problem can be overcome, but you’re in for extra work, extra filing fees, and extra delay.
When you must submit a substitute specimen, and it did not exist as of the date of filing (TM applications are submitted under oath and attorneys can be disciplined for fraudulent applications), then you will need to convert your application to 1(b) Intent to Use. This problem is curable, and you can respond to an office action by converting the application to Intent to Use.
Assuming no other problems with the application, your mark will then enter the publication phase, then you will receive a Notice of Allowance (described above). This will considerably slow the application process and you have to be mindful of the deadline to submit a Statement of Use. You will also have to pay SOU fees multiplied by the number of classifications.
This is what I mean by extra time, expense, and work. I haven’t had to convert a 1(a) to a 1(b) in many years, but it’s a massive headache when it occurs. If the problem was something I should have caught at the outset, then the client gets charged nothing and I eat the SOU fee. The important thing is to get the client the registration.
I hope this article was a useful resource in helping you understand trademark specimens and the application process.
