Alex Sandler | September 01, 2020
One of the most basic requirements for successful registration is that the trademark applicant must provide examples of use in commerce. Examples that showcase use of the mark in commerce are called specimens of use. Having a clear understanding of what constitutes an acceptable specimen is key to securing trademark registration. The guide below is intended to help with preventing specimen issues that often arise in the trademark application process.
What types of specimens for goods are acceptable?
The USPTO requires every trademark applicant to submit one specimen for each class covered in the application to show that the mark is used in commerce. For goods, the specimen must show the mark on the goods themselves or directly connected with the goods.
The following is a non-exhaustive list of acceptable specimens for goods:
A photograph of the product showing the mark directly on the goods (e.g., a brand logo on the bottom of a coffee cup)
A label or tag affixed to the goods (e.g. a label showing on a t-shirt)
A container or packaging for the goods where the mark is clearly displayed
A display associated with the goods (e.g., catalogs, flyers, and webpages that serve as point-of-sale displays, which means that they include necessary information for a consumer to make a purchase)
Instruction manuals or other printed matter that are included with the goods
In general, advertising materials such as brochures, price lists, press releases, business cards, and online advertising banners are not acceptable as specimens for goods.
What types of specimens for services are acceptable?
Specimens for services are treated differently from specimens for goods. For example, advertising is sufficient to show trademark use in connection with services. This means that material that is intended solely to provide consumers with information about a product is acceptable. An applicant can also submit a specimen showing a mark in the sale of the services.
The following is a non-exhaustive list of acceptable specimens for services:
Marketing materials that directly associate the mark with the services (e.g., newspaper and magazine advertisements, brochures, leaflets)
Business cards and letterheads showing a direct association between the mark and the services
Materials used in the rendering of the services (e.g., a copy of a menu for restaurant services or a screenshot of a website showing the services being offered)
New rules for trademark specimen requirements
As of February 15, 2020, the USPTO has set new standards to prevent fraudulent specimens for trademarks that are not actually in use in commerce. Under the new rules, where the specimens are labels or tags, the specimens must show the labels or tags attached to the goods. An examiner may accept a label or tag that is not attached to the goods if it shows the mark in actual use in commerce. To show this, the label or tag should contain the following: the mark itself, net weight of the goods, volume, UPC bar codes, lists of contents or ingredients, and any other essential information regarding the goods. As for web page specimens, the UPSTO requires that the specimen include the URL for the web page and the print date.
Other rules for specimens
Specimens filed electronically may be in .jpg or .pdf format, or for sound or video specimens, in any of .wav, .wmv, .wma, .mp3, .mpg, or .avi formats. Audio files can be at most 5 MB and video files at most 30 MB. Filers can also submit DVDs, CDs, audiotapes, or videotapes consisting of any of the above.
What types of specimens are unacceptable?
The specimen should be a real-life example of how the mark is used in commerce. Thus, a digitally created or altered image, a computer illustration, an artist’s rendering, or a mockup of how the mark may be displayed is unacceptable as it does not show actual use of the mark in commerce. Some lawyers have found that a specimen that comprises a photo that even looks like it could be digitally altered or created may receive a refusal. Specimens should, to the extent possible, show the mark in a real-life context.
One common reason why a specimen for goods is refused is because the trademark is presented in an ornamental or decorative way. Ornamental marks are often displayed as a design or quote across the front of apparel, such as a t-shirt or hat. To prevent this mistake, you should select a specimen that clearly shows that the mark is used to identify the source of goods, such as a label or tag affixed to clothing.
Are price information and an ordering method required for specimens?
In general, providing pricing information and a method to order goods is required to demonstrate that a mark is an acceptable “display associated with the goods.” Because many businesses are primarily online these days, many prefer to submit a screenshot of a webpage to prove to an examiner that a mark is in use in commerce.
For a webpage to qualify as a “display associated with the goods,” it must:
1. Contain a picture or textual description of the goods
2. Show the mark in association with the goods; and
3. Provide a means for ordering the goods
In addition to the above requirements, a webpage specimen must also include the date of access and a working URL.
To meet requirement 3, a web page display should provide as much information as possible to allow consumers to make a purchasing decision, i.e., information regarding pricing, minimum quantities, shipping, and accepted payment types. The examining attorney will also consider whether there is an e-commerce option to purchase the goods. In most cases, only providing a telephone number or email address as a means to order the goods is not sufficient to show that a web page is a point-of-sale display.
In In re Siny Corps, the Federal Circuit affirmed the examiner’s refusal to register a mark on the grounds that the specimen, which was a web page display, only served as advertising material because it lacked essential information to make a purchasing decision. See 920 F.3d 1331, 1337 (Fed. Cir. 2019). The specimen included the text “For sales information,” followed by a phone number and email address. See id. at 1334. Siny argued that because its fabrics are industrial materials sold to manufacturers, most of the details have to be worked out over the phone. See id. at 1335. It is a recognized rule that in cases where goods are specialized and require assistance from a salesperson in selecting a product, providing a telephone number as a means to order may be sufficient. However, when every detail regarding the transaction has to be worked out over the phone (as was the case here), the webpage is not a point-of-sale display. The court also noted the lack of evidence explaining the sales process. See id. at 1336.
The key takeaway from this case is that a company should include more information on their website, such as pricing information, to make it more of a point-of-sale display. For companies like Siny, it doesn’t hurt to submit evidence explaining the goods’ specialized nature, the need to consult with a salesperson over the phone to place an order, and how the overall transaction process works.
Does the applied-for mark have to match the mark as it is shown on the specimen?
The general rule is that an applied-for mark must be a substantially exact representation of the mark as shown on the specimen. If the applied-for mark and the specimen do not match, the examiner will have to determine whether amending the mark to match the specimen will materially alter the mark. Under Trademark Rule 2.72, if an amendment materially alters a mark, the examiner must refuse the application.
A material alteration occurs when the original format of the mark and the amended version do not create the same general commercial impression. As a general rule, if the amendment causes the examining attorney to have to conduct a new trademark search to ensure no registrations or pending applications conflict with the mark, the amendment will be deemed a material alteration. For example, in In re Innovative Companies, LLC, the TTAB held that while “FREEDOM STONE” is not a substantially exact representation of “FREEDOMSTONE,” amending the application to match the specimen would not constitute a material alteration. See 88 U.S.P.Q.2D (BNA) 1095, 1098 (TTAB 2008). It’s unlikely that consumers would interpret “FREEDOMSTONE” any differently from “FREEDOM STONE.” See id. Also, a new search would not be required because any mark that consists of the terms “freedom” and “stone,” whether combined or separated, would appear in the original search. See id.
Indeed, a few precedential TTAB decisions illustrate how the substantially exact representation requirement can obstruct the registration process. For example, in In re Guitar Straps Online LLC, the TTAB held that “GOT STRAPS” is not a substantially exact representation of “GOT STRAPS?” See 103 U.S.P.Q.2D (BNA) 1745, 1749 (TTAB 2012). Adding a question mark would constitute a material alteration because it changes the commercial impression from a statement to a question. See id. at 1748. Similarly, in In re Yale Sportswear Corporation, the TTAB affirmed the examiner’s refusal to register the mark “UPPER 90” because it appeared as “UPPER 90º” on the specimen. See 88 U.S.P.Q.2D (BNA) 1121, 1125 (TTAB 2008). Without the degree symbol, the mark has a completely different meaning and pronunciation, and therefore amending the mark would be a material alteration. See id. at 1124.
The substantially exact representation standard can get a little tricky when the application is for a standard character mark but the specimens show the mark in a stylized logo. The USPTO encourages applicants to submit standard character drawings. However, if a mark is presented in such a way that it creates a special commercial impression that would be lost if the applicant’s registration were based on a standard character drawing, a special form drawing is required to meet the substantially exact representation standard. A special form drawing protects a mark that consists of colors, elements of design, or stylized writing.
For example, in In re Morton Norwich Products, Inc., the TTAB held that the applicant could not register “LABID” in standard form. See 221 U.S.P.Q. (BNA) 1023, 1024 (TTAB 1983). On the specimen, the “a” was presented in such a distinct way that it set off the “BID” portion of the mark. See id. at 1023. “BID” has an accepted meaning when applied to the goods, which were drug prescriptions (i.e., means twice a day). See id. Without registering the mark in special form, this meaning would be lost. See id. In contrast, if a mark remains the same whether in stylized or standard character form, an applicant can submit a standard character drawing and still meet the substantially exact representation standard.
Are specimens required after registration?
The USPTO has begun a post-registration audit program that requires trademark owners to show proof of use beyond the usual Section 8 or 71 attestations. Trademark registrants that receive post-registration audit requests must substantiate the use of the mark for all goods and services for which registration is held. Audits can be sent out if the mark is registered for four or more goods or services in a single class or at least two goods and services classes. Registrants must prove use for each of the goods and services that they are registered for. The USPTO has defined proof of use according to the following:
Examples for goods:
Photographs that show the mark on a tag or label affixed to the goods
Hang tags or labels with the mark and the generic name of the actual goods on the tag or label and informational matter that typically appears on a tag or label in use in commerce for these types of goods
Screenshots of web pages with the URLs and access or print dates that show the mark being used in connection with the goods at their point of sale
Photographs of the mark on packaging where the goods are visible through the packaging
Photographs of the mark on packaging where the packaging identifies the generic name of the goods included in the package.
Examples for services:
Copies of brochures or flyers where the mark is used in advertising the services
Photographs of the mark on retail store or restaurant signage
Photographs of the mark on service vehicles
Screenshots of web pages with the URLs and access or print dates where the mark is used in the actual sale or advertising of the services.
The requirements for proof of use are very similar to those for pre-registration specimens. Of special consideration is the requirement that proofs of use match the registered mark and the requirement that the mark be used at point of sale for online storefronts.
Submitting a strong specimen is an important part of trademark registration. By getting it right the first time and maintaining use of the mark in connection with acceptable specimens, you can save yourself and your client a lot of time in the application process. For more information on acceptable specimens, please refer to the Trademark Manual Examining Procedure (TMEP) guide under §904 for goods and §1301 for services.