To be eligible for registration, a trademark must be used in commerce. At the federal level, trademarks are registered by the US Patent and Trademark Office (“USPTO”), and registration of trademarks by the USPTO requires use in interstate commerce. That is, the sales of goods and services that cross the borders of States.

Among other things, each applicant for a trademark must provide the USPTO with a Statement of Use and with specimens of use. The Statement of Use is a sworn form that must be completed providing information on when the trademark was first used and other details. As for the specimen of use, the USPTO has various rules about how to provide a proper and sufficient specimen. The rules vary a bit depending on whether the trademark is used with goods or with services.

Note that, generally speaking, the rules are the same whether you have filed a standard application or an intent-to-use application. Note further that specimens of use are required for each Class of goods/services with which the trademark is associated. Here is a quick rundown.

For tangible goods, the basic rule is that the trademark must be ON the goods themselves, on the packaging, or on the containers of the goods. Generally, photographs depicting the above are acceptable. In addition, for goods, the trademark can appear:

• On a tag for the good, such as a mattress or clothing tag
• On a label such as a can or bottle label, whether removable by the consumer or not
• On any sort of display where the goods are sold, such as a shelf display or something like the trademark used on a dispensing device (like a gas station pump or vending machine)

Since services are not tangible, it is not possible to show the use of the trademark on the product itself. Note also that what might be an acceptable specimen of use for services may not be sufficient or acceptable for goods/products. An example here is the use of the trademark in advertising. That is okay for a service trademark but not sufficient for a trademark used with goods/products. Here are some acceptable specimens of use for service trademarks:

• On advertising or printed marketing materials showing a link between trademark and service
• On packaging or transmittal packets where a physical thing results from the services, like an envelope for a prepared tax return
• Use in television, radio, and online commercials/ads for the services
• Signage where the services are rendered
• Use of the trademark on materials needed for providing/rendering of the services, such as a menu from a company providing catering service or a ticket for a music concert
• Use on invoices, business cards, letterhead, etc., where services are linked with the trademark

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

Trademark Specimens of Use: What the USPTO Actually Requires

Specimens of use are among the most common sources of trademark application Office Actions and denials. The specimen requirement sounds simple — show that you are using the mark — but the USPTO applies specific legal standards that many applicants do not anticipate. A technically deficient specimen can be fatal to an application even when the mark is genuinely being used in commerce exactly as described. Here is the detailed legal framework for what the USPTO requires.

The Legal Basis for the Specimen Requirement

The Lanham Act requires that a trademark be “used in commerce” to be eligible for federal registration. “Use in commerce” for goods is defined at 15 U.S.C. § 1127 as the mark being “placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto,” with those goods then being “sold or transported in commerce.” For services, use requires the mark being “used or displayed in the sale or advertising of services” while those services are “rendered in commerce.”

A specimen of use is the documentary evidence submitted to the USPTO proving these statutory requirements are satisfied. Specimens are reviewed by the examining attorney as part of the application examination. If the specimen does not satisfy the legal standard for the type of mark and the goods or services identified, the examining attorney will issue an Office Action refusing the specimen and requiring submission of an acceptable substitute.

Goods Specimens: The Direct Connection Requirement

For trademarks used with goods, the critical legal requirement is that the specimen show a direct connection between the mark and the goods — the mark must appear on or in direct association with the goods being sold. The USPTO applies this standard rigorously. Commonly submitted specimens that are frequently refused for goods include:

• Advertisements or promotional materials alone — these show the mark in promotion but do not demonstrate use on or in association with goods being sold; advertising materials that are acceptable for service marks are generally not acceptable for goods trademarks
• Website screenshots showing only the mark in a banner or header — a website screenshot is acceptable for goods only if it shows the mark and the goods together with a mechanism for ordering the goods (a “buy now” button or shopping cart functionality), demonstrating that the goods are being sold in connection with the mark; a homepage showing a company name and logo without product purchase functionality fails
• Mock-ups or digitally altered images — the USPTO requires actual use; a digitally created image showing how the mark will appear on a product, without proof that the product has actually been sold with the mark in that form, is not an acceptable specimen

Acceptable specimens for goods typically include: photographs of the mark on the product itself; photographs of product packaging, labels, or hangtags bearing the mark; screenshots of a functioning e-commerce page showing the mark, the goods, and a purchase mechanism; or photographs of a physical point-of-sale display clearly associating the mark with goods for sale.

Service Mark Specimens: Advertising and Signage

Because services are intangible, the specimen requirements for service marks are different from goods specimens. For services, advertising material — including website pages, brochures, business cards, printed advertisements, and television or radio commercials — can constitute acceptable specimens, provided the specimen shows the mark in use in connection with the specific services being rendered.

The key standard is that the specimen must show the mark and the services together in a way that demonstrates the mark is being used in connection with those services. A generic company name on a business card without any description of the services is typically insufficient. A website page that displays the mark along with a clear description of the specific legal services, consulting services, or other services provided and offered for hire is more likely to satisfy the requirement.

Additional acceptable specimens for service marks include signage at the location where services are rendered, menus or printed materials for service businesses (catering menus, financial services brochures), invoices or service agreements that identify the mark and the services, and screenshots of social media profiles or service listing pages that connect the mark to specific services being offered.

Digitally Produced Specimens and the Authenticity Problem

The USPTO has increasingly scrutinized digitally produced specimens — particularly as photo editing software makes it easy to create convincing-looking product images that do not reflect actual commercial use. In 2019, the USPTO implemented a pilot audit program specifically targeting suspected fraudulent specimens, and has since made specimen audits a regular part of post-registration maintenance review. The USPTO has the authority to investigate the authenticity of specimens submitted during both the application process and post-registration maintenance filings.

Submitting a false specimen — a digitally altered image or a staged “use” created solely for the purpose of satisfying the specimen requirement — constitutes fraud on the USPTO. Under 15 U.S.C. § 1120, a person who procures a trademark registration through fraud is liable in a civil action for damages. Additionally, a registration obtained through a fraudulent specimen is void and subject to cancellation. Fraud on the USPTO is also a basis for the USPTO to reject related pending applications and can result in referral to the Department of Justice for criminal prosecution in egregious cases.

Acceptable Specimens for Digital Goods and Online Services

With the rise of software, apps, and digital services, the USPTO has developed guidance on specimens for digital goods and services. For downloadable software and apps (typically in Class 9), acceptable specimens include screenshots of the download page on an app store or a company website, showing the mark, the product name, and a download button or purchase link. The specimen must demonstrate that the software is actually available for download, not merely that it exists or is planned.

For online services provided on a software-as-a-service (SaaS) basis (typically Class 42), acceptable specimens include screenshots of the service interface showing the mark in use, sign-up or login pages connecting the mark to the service, and screenshots of pages where the service is described and available for subscription purchase. The specimen must make clear that the mark is being used in connection with actual services being offered and rendered, not merely in development or beta testing.

The trademark attorneys at Revision Legal review specimen issues as part of every application we handle, and we assist clients in responding to specimen-related Office Actions. If your application has been refused based on a deficient specimen, or if you want to ensure your initial specimens will satisfy USPTO requirements, contact us before you file.