What Is An Acceptable Trademark Specimen?

A trademark specimen is a real-life example of how you actually use your trademark in connection with your goods or services and identifies you as the owner of the trademark in relation to those goods or services to consumers.

What types of specimen are acceptable?

For goods, the specimen must show the mark on the goods themselves or have a direct link with the goods. Acceptable specimens include a photograph or digital image of the actual goods with the trademark on the good, a label or tag with the trademark that is affixed to the goods, a screenshot of a webpage selling the goods with the trademark, product packaging with the trademark, or a photograph of a sale display sign where the goods are sold.

For services, the specimen must show the mark used in the advertising or offering of the services. Acceptable specimens for services include a picture of a business sign, a television commercial, marketing materials, business cards and letterheads, invoices, or online advertising that show a direct relationship between your trademark and the services.

For more information about acceptable specimens, consult the Trademark Manual of Examining Procedure published by the USPTO; TMEP § 904 (for goods), and TMEP § 1301.04 (for services). General guidance on acceptable specimen is listed on the USPTO’s website.

What types of specimen are unacceptable?

There are common reasons why specimens are refused. This includes when a specimen:

● Does not show trademark with or near the goods or services

● Is illegible or partially visible

● Is not in actual use in commerce (i.e. a digitally altered image or “mock-up,” a printer’s proof, only a drawing, or use with goods or services not included in the application)

● Is an inappropriate type for your goods or services, i.e., advertising material is acceptable for services, but not for goods

● Does not show actual use of the trademark (i.e. a press release sent only to news media)

How can I overcome a specimen refusal?

The USPTO provides five response options for overcoming a specimen refusal. Using the Trademark Electronic Application System (TEAS), you may:

● Submit a verified specimen or a verified substitute specimen

● Change your filing basis to “intent to use” or withdraw your Allegation of Use

● Submit proper verification of your specimen or substitute specimen

● Submit point-of-sale evidence showing that the specimen was used with your goods

● Submit a true copy of the originally submitted specimen

Having a clear understanding of how to respond to an Office Action is important. General information about responding to Office Actions can be found here. The trademark registration process is complex. Avoiding common pitfalls that may cause specimen refusal requires the experience of a skilled trademark attorney who will be able to carefully assess whether you meet the USPTO’s requirements. Please contact us to schedule a consultation regarding your trademark.