Beware the Specimen Requirement

20Oct

Beware the Specimen Requirement

Prior to registration of any mark filed based on use or intent to use, the owner must submit one specimen for each class of goods or services, showing the mark as it is used in commerce.  Once the mark has registered, the owner of the mark is required to submit a specimen with the Declaration of Use filed between the 5th and 6th years after registration, and with each renewal of the registration.

The specimen requirement seems rather simple.  For goods, the specimen should be a label, tag, or container for the goods, or a display associated with the goods.  For services, the specimen must show the mark as actually used in the sale or advertising of the services recited in the application.  There are various types of specimens that may be submitted for services, however, the specimen must either show 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, or show the mark used or displayed in advertising the services, which encompasses marketing and promotional materials.

The perceived simplicity of the specimen requirement can, however, get the trademark owner in trouble.  Over the past several years, the U.S. Patent and Trademark Office (USPTO) has been scrutinizing specimens strictly.  A simple label or tag displaying the mark, with no context is no longer acceptable.  The specimen must show the mark as used in commerce in connection with the goods for which it is used.  This means the specimen should show the specimen on or attached to the goods, or the specimen should identify the goods, rather than simply displaying the mark.  A digital rendering of the specimen is not acceptable.  If the nature or use of the specimen is not clear, the owner must explain the specimen and how it is used.  For services, the specimen must display the mark and identify the services.  Advertising or promotional materials without identification of the services, or even a sign or computer webpage rendering the services without a reference to the services will not be accepted.

The refusal of a specimen can create additional requirements.  A statement of use may not be withdrawn.  Accordingly, if the specimen is not acceptable and a substitute specimen was not in use prior to the deadline to file a the statement of use, the application may become abandoned.  Even if there is time left to file the statement of use, the Trademark Office may require significantly more information concerning the specimen, such as the date the specimen was created, examples of how the goods appear in the sales environment, and sales figures.

To avoid several potential problems, it is important to submit an acceptable specimen the first time.  Contact Us.

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