Have you ever had a trademark application rejected because the specimen of use in commerce was not acceptable?

This can be very frustrating if you do not understand the United States Patent and Trademark Office’s (USPTO) requirements for submitting specimens.

An applicant for trademark registration must attach specimens of the trademark being used in commerce when an in-use application is filed or a Statement of Use is submitted (for an intent-to-use application that has received a Notice of Allowance).

Over the years, clients have sent me a wide variety of specimens of use. And sometimes they have to find replacements because they send me specimens that would not meet the USPTO’s requirements. 

You can streamline the process of registering your trademark by taking a few moments to understand what to look for when selecting a specimen.

What Exactly Is a Good Specimen of Use in Commerce?

A specimen is an example of the trademark being used in real life to market, sell, and/or advertise a product or service in commerce.

For products, the trademark must be included on examples of:

• Product packaging or containers
• Labels
• Tags
• The product itself
• Point-of-sale displays with the product on the display that includes the trademark
• An instruction manual for a product

For services, the trademark must be on a specimen that shows a direct association between the service and the trademark, such as:

• Copies of advertising and marketing for the service
• A photograph of a business sign or a billboard
• A webpage screenshot that includes the trademark, a description of the services, the webpage’s URL, and the date the screenshot was taken

Items that are not considered acceptable by the USPTO are:

• Stationary or business letterhead
• A business card
• A business license
• A photo of the trademark
• Pre-sale orders
• A printer’s proof
• A digitally created or altered image or mock-up
• A webpage without the URL and date accessed

You should also not include a specimen or specimens that:

• Include different versions of the trademark
• Do not match the trademark attached to the application exactly

If you do not include specimens that meet these USPTO requirements, it will cost you more time and money to fix the problem. So take the time to ensure your specimen fulfills the requirements above before submitting it.

You can find additional information on specimens of trademarks used in commerce on the USPTO’s page about Specimen Refusal.

For assistance with preparing and filing trademark applications, please contact the Marks Gray IP team. We will help you avoid submitting a specimen that will be rejected and other potential missteps in the application process.