Trademark specimens overview for
experienced filers
Mark Rademacher,
Legal Policy staff attorney
Renee Servance,
Law Office 112 managing attorney
Why specimens
• Specimens are evidence of how a mark is
used in commerce.
• The United States Patent and Trademark
Office (USPTO) evaluates specimens to
make sure a registration accurately reflects
how a mark is used in the marketplace.
4
Definition of “use in commerce”
• The bona fide use of a mark in the
ordinary course of trade, and not made
merely to reserve a right in a mark.
5
Use in commerce
• Continuing obligation even after a mark is
registered
• Limited exception for excusable nonuse
• Special circumstances beyond the owner’s
control or forced by outside causes
• Impact from COVID-19 may qualify
6
Use in commerce
• The rules require “one specimen per class
showing the mark as actually used in
commerce on or in connection with the
goods or services identified.”
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Use in commerce on goods
• A mark shall be deemed to be in use in
commerce on goods when:
– It is placed in any manner on the goods, or their
containers, or the displays associated therewith; or
on the tags or labels affixed thereto; or if the nature
of the goods makes such placement impracticable,
then on documents associated with the goods or
their sale; and
– The goods are sold or transported in
commerce.
8
Use in commerce on services
• A mark shall be deemed to be in use in
commerce on services when:
– It is used or displayed in the sale or advertising
of services and the services are rendered in
commerce; or the services are rendered in more
than one state; or in the United States and a
foreign country and the person rendering the
services is engaged in commerce in connection
with the services.
9
Specimens for goods
• Use on the goods or on packaging or
containers for the goods
• Use on a point of sale display of the goods
• Use on an electronic point of sale display
of the goods
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Specimens for goods –
mark is on the goods
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Specimens for goods –
mark is on the container
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Labels and tags
• Unattached labels and tags are acceptable
so long as there is sufficient information to
show use in commerce.
• If the appearance of the label or tag
suggests the goods are not in actual use in
commerce, the examining attorney will
refuse registration.
13
Labels and tags - acceptable
14
Labels and tags - unacceptable
15
Specimens for goods –
physical displays
• Displays associated with the goods
essentially comprise point-of-sale material
such as banners, shelf-talkers, window
displays, menus, and similar devices.
• A display must show use of the mark
directly associated with the goods and at
the point of sale.
16
Specimens for goods – catalogs and
electronic displays
• A webpage or catalog that displays a product
can constitute a "display associated with the
goods" if it:
– Contains a picture or textual description of the
identified goods
– Shows the mark in association with the goods
– Provides a means for ordering the identified
goods
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Electronic display
18
Picture or description of the goods
The mark associated with the goods
The means for purchasing
the goods
Means for purchasing the goods
19
Specimens for goods – components
or ingredients
• A specimen that shows use of a mark to identify a
component or ingredient of finished goods is not
acceptable for the finished goods.
• For components or ingredients as goods, “it is
particularly important that the specimen contain
some visual or verbal identification of the
component to create the required direct
association between the mark and the identified
goods.”
20
Advertisements
• Advertising material is generally not acceptable as
a specimen for goods and can only be accepted if
it comprises a point of sale display.
• Examples:
– Advertising circulars
– Brochures
– Press releases
– Business cards
– Invoices
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Poll: Would you refuse?
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If there is no means for ordering the mark, the display is
advertising for goods.
Specimens for services
Service mark specimens may show use by showing
the mark:
• Used or displayed as a service mark in the sale of
the services, which includes use in the course of
rendering or performing the services
• Used or displayed in advertising the services,
which encompasses marketing and promotional
materials
23
Service mark specimens
• The mark must be presented sufficiently
prominent on the specimen – mark placement,
size, or stylization are considered.
• The specimen must show the mark used in a
manner that creates in the minds of potential
consumers a direct association between the
mark and the services.
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Service mark specimens
Advertising the services:
• To establish the requisite direct
association:
– The specimen must contain a reference to the
services.
– The mark must be used on the specimen to
identify the services and their source.
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Service mark specimens
Rendering the services:
• Direct association may be:
– Indicated by the context or environment in which
the services are rendered
– Inferred based on the consumer’s general
knowledge of how certain services are provided
or from the consumer’s prior experience in
receiving the services.
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Acceptable specimens for services
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Unacceptable specimen for services
Unacceptable specimen for services
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“Our sincere commitment to all our customers is that
we will continue delivering innovative system utilities
that are as simple to use as they are powerful and
reliable. We also promise that we will keep providing
the first-class free software and online service, for
personal or non-commercial use."
"We pursue the genuine ambition of becoming one of
the world's top utility producers and Windows system
service providers on the Internet."
Specimens for services - signage
• Mark appearing on the front door of
applicant’s offices without reference to the
services is unacceptable.
– The door is advertising, which must create an
association between the mark and the services.
– Display on the door is not using the mark in
rendering the services. The door is unconnected to
any service without prior knowledge of an existing
client.
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Software specimens
• Software must be specifically identified as
recorded or downloadable, which is a
good, or as providing online non-
downloadable software, which is a service.
• An acceptable specimen for software
services may not be acceptable for
recorded or downloadable software.
31
Software specimens - goods
• Recorded or downloadable software:
• Mark may be on the packaging or the recording itself
• Mark may be in a display screen for the software or
screenshot of software running
• Downloadable from an app or webpage
– Must create an association between the mark and the
software
– Must provide means to purchase or download
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Software specimens - goods
• Means to purchase or download:
– Purchaser must see the mark
contemporaneously with the ability to purchase.
– A “Request a demo” button is not sufficient.
– Ordinary meaning of demo suggests an
opportunity to see how the product works, not
purchase.
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Software specimens - example
34
Mark: PORTAL
Goods: Downloadable
software enabling users to
create, edit, distribute, shape,
exhibit, transmit, annotate,
download, store, comment
on, license, and monetize
digital media content via
computer, mobile device, and
communications networks
Poll: Why would you refuse
this specimen?
35
Mark: BOT-NET
Goods: Downloadable
computer game software
via a global computer
network and wireless
devices
Specimen: Digital images
of a website currently used
in commerce.
Software specimens – manuals
– Software user manuals may be acceptable.
– May not be acceptable where wording on the
specimen called into question whether the
specimen was actually a manual for software.
36
Software specimens – manuals
37
Mark: USER FIRST
Goods: Computer software, namely,
software development tools for the
creation of mobile internet
applications and client interfaces.
Specimen is described as a scanned
first page of a PDF instruction manual.
Wording “Certification Training Lab:”
made it doubtful that these materials
would be recognized as a user manual.
Online non-downloadable
software specimens
• Providing temporary use of non-downloadable
software is a service.
• Specimens are analyzed form the view point of the
purchaser.
• The mark must be shown “in a manner that would be
perceived by potential purchasers as identifying the
applicant’s services and indicating their source.”
38
Online non-downloadable
software specimens
• Advertising is acceptable if the mark is directly
associated with the services.
• Sign-in screens are acceptable specimens if:
– Display of the mark on the sign-in screen alone sufficient
to associate the services with the mark
– Generally known means of accessing online software
– Textual description of the software is helpful, but not
necessary
39
Online non-downloadable software
specimens – example
40
Mark:
Services: Providing
temporary use of online
non-downloadable
software for the
management of records,
administration and
operations for schools
and colleges.
URL: https://portal.onlinesmart.net/Login.aspx?ReturnUrl=%2f
Date Accessed: 9/16/2013
Online non-downloadable
software specimens
• Software or services:
– The primary consideration is whether the
specimen indicates that the applicant is actually
performing the relevant service activities for
others or allows users to perform the activity
themselves.
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Services accessed via an App
42
Mark: KURBKARMA
Services: On-line
matching services for
connecting automobile
drivers with other
drivers who are,
respectively, searching
for or departing from
parking spaces
accessible via a mobile
application.
Social media specimens
• Using social media is not the same as
providing social media services.
• Social media is usually a means to
advertise other goods or services.
• Advertising is not acceptable for goods.
Consequently, acceptable social media
specimens are usually for services.
43
Social media specimens
44
Mark: SAMBURGERS
Services: Fast-food
restaurant services
Page displays the mark
and associates the mark
with the services.
URL: https://www.facebook.com/SamburgersLeesville/
Date Accessed: 7/24/2018
Social media specimens
• Point of sale displays:
– A page from social media may be accepted for
goods, provided the page satisfies the elements
of a display specimen. Page must:
– Contain a picture or textual description of the goods
– Show the mark in association with the goods
– Provide means for ordering the identified goods
45
Specimens not in use in commerce
• Digitally created
• Digitally altered
• Mockup
Such specimens do not show actual use of the
mark on or in connection with the goods or
services in commerce and registration must be
refused under Sections 1 and 45 of the
Trademark Act.
46
Definitions
• Digitally created
– Digital drawing of a product or packaging on which the
mark appears
• Digitally altered
– Alteration of an existing digital image of a product or
packaging, a display associated with the goods, or an
advertisement or website
• Mockup
– Created, typically non-digitally, to show the mark in
connection with the goods
47
Mockups and digitally
altered specimens
• Fake specimens present several issues:
– Fail to show mark as used in commerce
– Affect integrity of the register
– Fraud on the USPTO
– Impact on validity of registration
48
Examination procedures
• If the specimen shows articulable signs of being
digitally altered, created, or a mockup, or the
examining attorney finds the identical image
without marks or with different marks, the
examining attorney must issue:
– A refusal under Trademark Act Sections 1 and 45 refusal
– A request for information (RFI) under 37 C.F.R. § 2.61(b)
• In rare circumstances, an RFI may be issued
without a refusal.
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Request for information
under Rule 2.61(b)
• Information that will help examining attorney
determine whether the specimen was in use under
the statutory definition (and whether there is use
in commerce at all):
– Examples of use in a sales environment for goods or
advertising for services
– Documents showing payment or other consideration for
the goods or services (personal or private information
redacted)
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Applicant’s response options
• A properly verified and acceptable substitute
specimen with satisfactory answers to the RFI:
– All questions and requests should be addressed.
– If no information is available for a particular question
or request, then submit a statement to that effect.
– Redact confidential, personal, or otherwise sensitive
information from submitted documents.
• Amendment to assert another basis of
Section 1(b) or 44(e)
51
Tip-offs: digitally created, digitally
altered, or mockup
• No depth or surface features or otherwise missing surface features
or inappropriate blank spaces
• Drawing of the goods
• Mark does not follow the contours of product or background
• Unrealistic sharp edges
• Floating appearance
• Different level of resolution or sharpness
52
Tip-offs: digitally created, digitally
altered, or mockup
• Different texture from goods
• Odd location or odd wording on the specimen or
misspellings
• Use on another party’s known, recognizable product
• Questionable information on websites
• Same image used with other marks or no marks
• Incongruous white or other type of border around the
mark
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Examples
Digitally created label vs.
actual packaging
Unacceptable: Label lacks depth, surface features and product
information. Effectively only a drawing of the mark
Acceptable: Specimen is a photograph of an actual box with
dimension and imperfections associated with an actual box
55
Digitally created – unrealistic images
of the goods
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Digitally Altered – mark applied to
an existing third party product
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Mockup – mark applied to the
product in an atypical manner
58
Poll: Would you refuse?
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Mark: Heal Different
Goods: Supplements
Poll: Would you refuse?
60
Mark: STEALTH
Goods: Golf shoes
Poll: Would you refuse?
61
Mark: GUIGA
Goods: Knives, forks
and spoons
Poll: Would you refuse?
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Mark: HEAL DIFFERENT
Goods: Supplements
Poll: Would you refuse?
63
Webpage URL and access date
• A webpage specimen must include the URL
and access or print date.
• The URL and access date may be submitted:
– Directly on the specimen webpage itself
– Within the electronic form used to submit specimen
– In a verified statement in a later-filed response
64
Webpage URL and access date
• Although using the dedicated fields in the
electronic filing form is recommended, the
URL and access date information may be
provided anywhere within the form:
– specimen description
– miscellaneous statement
– arguments
65
Webpage URL and access date –
in the screenshot
66
Webpage URL and access date –
screen-capture software
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Webpage URL and access date
68
Webpage URL and access date
69
Webpage URL and access date
• If the webpage contains a picture of the
goods bearing the mark, the URL and
access date are not necessary.
• The picture must be otherwise acceptable
as properly showing the mark on the
goods.
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Webpage URL and access date
71
Mark: GNC
Goods: Vitamins
Avoiding specimen pitfalls
• Review the client-provided specimen and
discuss what it is with the client
• Ask if better specimens are available if
what is presented is marginal
• Provide the most legible, clearly
acceptable specimen you can up-front
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Avoiding specimen pitfalls
• Use entire point of sale display, not a
cropped, retouched picture of the goods
from a webpage
• Highlight or describe where the mark
appears and where the goods or services
appear or are referenced
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Avoiding specimen pitfalls
• Avoid submitting brochures as specimens
for goods.
• Consider providing multiple specimens per
class.
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Avoiding specimen pitfalls
• Provide a clear and accurate description of
each specimen provided, explaining what
the specimen shows and its context:
– Is the specimen a photograph and what does it
show?
– Is the specimen a website excerpt or from
p
rinted promotional materials?
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Additional resources and feedback
• Specimens webpage at
www.uspto.gov/trademarks/laws/specimen-refusal-
and-how-overcome-refusal
• TMEP at tmep.uspto.gov/RDMS/TMEP/current
• General feedback about Trademarks content:
TMFeedback@uspto.gov
• Trademarks contact information available at:
www.uspto.gov/trademark/contact-trademarks.
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