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What is an Acceptable Trademark Specimen and Why is it Important?

By John DiGiacomo

When a person or business applies with the US Patent & Trademark Office (“USPTO”) to register a trademark, one requirement is that the applicant supply “specimens of use.” Use of a trademark in commerce is a legal requirement for a trademark to be registered. Use is not only required for registration, but also for a trademark to exist legally and be protected from infringement. Further, the use-in-commerce requirement is ongoing. Trademark registrations must be renewed about every 10 years. Each renewal application must include specimens of use during the relevant time period.

A specimen of use is an example showing the trademark as it is used. The specimen must be of actual use, not just a hypothetical use or a proposed use or photoshopped or otherwise altered. Providing acceptable specimens of use to the USPTO is important. Otherwise, the application for registration (or renewal) will be denied.

For trademarks used with goods and products, a proper and acceptable specimen of use might be a photograph of the trademark affixed to the actual product (like the trademark affixed to the bottom of a coffee mug). When providing a specimen to the USPTO, a photograph or a digital scan is required, not the physical object. Other examples of acceptable specimens of use with goods and products include :

  • A photo of product container or packaging showing the trademark
  • A photo or scan of a tag or label attached to the physical product showing the trademark
  • A screenshot of a webpage displaying the trademark where the relevant goods can be purchased or ordered
  • A photo of a sales displays where the goods are sold showing the trademark along with the product
  • And more

For trademarks used with services, the rules are slightly different — though similar — because services do not generally involve a physical product. As such, acceptable specimens can involve examples of the trademark being used on advertising materials, webpages, packaging, correspondence, signage on office locations or vehicles and the like. These are not generally acceptable specimens of use for trademarks used with goods and products.

Note that ALL specimens of use must show the trademark being used with the products/services with which the trademark is registered. Generally, trademarks are registered for use with a given class or category of goods or services. A trademark can be registered with several such categories. For example, a musical group can register its trademarks for use with live performances, with recordings and for use on clothing like t-shirts and hats. Specimens of use must be provided for each class or category.

For a specimen to be acceptable, a few other important rules apply such as:

  • The specimen provided must be clear — no fuzzy photos or scans
  • The specimen must show the entire trademark
  • The specimen must show the relevant context — that is, must show the whole trademark as used for the whole package — no cryptic or vague close-ups
  • The trademark shown must be the exact one depicted on application or registration — not a variant or a trademark that has been modified or changed — even slightly
  • The specimen must show use by the applicant — not use by someone else in a media article or online review
  • The specimen must show the trademark used in a way that directly associates the mark with the goods or services — not just a generalized use of the trademark
  • The specimen must show the trademark used for the actual class of goods or services with which the trademark is associated, not a related class of goods or services — for example, a trademark for use ON t-shirts must be shown ON t-shirts, not for a t-shirt printing service
  • And more

Contact Revision Legal

If you have questions about trademarks or service marks, need help creating and registering a trademark/service mark or if you are facing trademark/service mark litigation, contact the proven trademark litigators at Revision Legal at 231-714-0100.

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