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Use In Commerce – Are Your Specimens Acceptable?

by | Jun 11, 2020 | Intellectual Property, Trademark

Filing a trademark application can be challenging for some businesses, especially when it comes to acceptable specimens of use in commerce. The USPTO has very specific guidelines on what is acceptable. And they have become stricter in the past two years about what they will accept.

So here are some tips for selecting a good specimen:

  1. Make sure the specimen has the trademark that you are registering on the specimen. The exact same trademark, not a different variation of the trademark.
  2. If you claimed color as part of the trademark, make sure you submit specimens that have the exact same colors, not a reverse image or different shades of the color you are claiming.
  3. If the trademark you are trying to register does not include the secondary phrase that you use in marketing, make sure the specimen does not include the secondary phrase, just the trademark you are trying to register. For example, Marks Gray, PA uses the secondary phrase “Lawyers for Enterprise.” When we registered Marks Gray in the class for legal services, we only submitted specimens that included Marks Gray.
  4. For products, make sure the trademark is on the product, a label, the packaging, or at a point-of-sale display. For example, if you are registering in Class 25 for clothing, such as jackets and hats, make sure the trademark is on the label or tag for the jackets and hats or on the packaging that it is wrapped in for sale.
  5. For services, make sure the trademark is on 1) copies of advertising and marketing materials, 2) photographs of signage or billboards, or 3) materials showing the mark in the sale, rendering, or advertising of services. The specimen should explain the exact service class in which the business is trying to register. For example, a restaurant would register in Class 43 for restaurant services, so they could submit a menu or photos of signage outside or inside the restaurant.
  6. If the specimen is a screenshot from a website, whether for goods or services, the screenshot must include the webpage’s URL and the date it was accessed or printed.
  7. If the business is registering in Class 35 for online retail sales, make sure the screenshot includes the little cart that appears at the top of the webpage. That way, the examining attorney can see that the business is truly selling products over the internet and not just instructing customers to call the business to order over the telephone.

These tips are also relevant when submitting specimens of use in commerce for a Declaration of Continued Use that is filed between the fifth and sixth year of registration and for the Combined Declaration of Use and Application for Renewal that is filed in the tenth year of registration.

If you don’t follow the requirements set forth by the USPTO, they will reject your specimens and tell you all the reasons why your specimens were rejected. Then you have to submit better specimens. I have seen trademark owners who have abandoned their trademark applications because they are never able to figure out how to submit an acceptable specimen. 

So, either hire an IP lawyer to help you or read the USPTO instructions very carefully and follow them to the letter. The USPTO does not care what you think is a good specimen of use in commerce. They only follow their own guidelines.


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