Gov’t Says Prove It: Trademark Application Specimens

Proof_SpecimenProve it! The specimen requirement in a federal trademark application is the government’s way of saying “you said you are using the mark, now prove it.” The USPTO requires that you submit a specimen showing the mark as it is used on or with the goods or services at some point in the trademark application process. The specimen is simply an example of how the mark is used.

The specimen requirements for goods are different from the specimen requirements for services.

Goods

For goods, the specimen must show the mark on (1) the goods, (2) containers or the displays associated with the goods, or (3) the tags or labels affixed to the goods. Trademark Manual of Examining Procedure (TMEP) 904.03. Containers associated with the goods can be the retail packaging or shipping packaging showing the mark. Displays associated with the goods can include trade show displays or retail displays or the like. One way to obtain is specimen is to take a photo of the mark used in the manner just described.

If due to the nature of the goods placement in the manner just described is impracticable, then the specimen showing the mark on documents associated with the goods or their sale. One example of this is the sale of computer programs that are sold via electronic download. In that case, an acceptable specimen might be a printout of a display screen that creates an association between the mark and software and provides sufficient information to enable the user to download or purchase the software from the webpage having the mark. TMEP 904.03(i).

Advertising material is not generally acceptable as a specimen for goods. TMEP 904.04(b). So showing the mark used on a website having the goods, is not enough, unless in some cases, the website provides a manner were the user can purchase the goods via the webpage and the mark is associated with the goods on that webpage. TMEP 904.03(i).

Services

For services, advertising material that shows the mark and advertises the claimed services is an acceptable specimen. TMEP 1301.04. It is important that the specimen show the services listed in the trademark application. If all of the services listed in the application are not shown in one specimen, then multiple specimens can be used to show all the services. Examples of advertising include webpages, brochures, print advertising, etc. It is also acceptable to use materials showing the mark used or displayed as a service mark in the sale of the services, which includes use of the mark in the course of rendering or performing the services.

Specimen Agreeing with Mark as Filed

The specimen must show the mark as claimed in the mark section of the trademark application. If the application provides a special form mark, then the specimen must show the mark in substantially the same manner as provided in the image uploaded in special form mark section of the application. TMEP 807.12.

When is a Specimen Required?

A specimen is required at the time of filing for a section 1(a) use-based application. The specimen is required later at the time of filing a statement of use after the trademark application is allowed for a section 1(b) intent to use application.

This make sense because in a use-application you are saying that you are using the mark at the time the application is filed. Therefore you should be able to provide proof of use (e.g. the specimen) at the time of filing.

But for a section 1(b) intent to use application, you are saying that you are not using the mark now at the time of filing but intend to use it later. Therefore, when you later start using it, that is the time the government requires that you provide proof.

Photo credit to Frank Hebbert under this creative commons license. The photo shown here is changed to crop in tighter on “proof” than is provided in the original photo.

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