This blog post explains the general requirements for specimens for trademark and service mark applications. There are numerous exceptions to these general specimen rules depending upon the type of the mark, the respective goods and services of the application, and particular industry standards for the goods/services.

What is a Specimen?

A specimen is a piece of evidence proving that your mark is used in commerce. The specimens are essentially real-life evidence of how your mark is used in the actual marketplace. The use of a mark has a unique legal definition in the Trademark Act (known as the Lanham Act) which dictates the evidence used to prove the legal use of a mark in U.S. Commerce. This definition specifies different standards for using a mark on goods as opposed to services. In U.S. trademark practice, goods are considered any products classified in the first 35 of 45 international classes. Services are the business activities performed for others that are classified in the last ten international classes (Classes 36 to 45).

Specimen for Goods (International Classes 1-34)

For goods in International Classes 1-34, the Lanham Act specifies that a mark is used 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.”[1] Therefore, a specimen for goods must show the mark physically or directly affixed to the goods, such as on the goods itself, on a label/tag attached to the goods, on the product packaging or container of the product, a point-of-sale display where the trademark is on the website where your goods can be purchased, or a display in a store where the physical products are also displayed. A specimen for goods can be a photo of the above, but it cannot be an advertisement for the goods (unless the ad shows a photo of the product displaying the mark).

Specimen for Services (International Classes 35-45)

For services in International Classes 35-45, the Lanham Act specifies that a service mark is used “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[…].”[2] This means a specimen for services can be any advertisement, brochure, website printout, or any other promotional material which shows your mark advertising your services or selling your services; or any business signs, invoices, business vehicle, or the like showing the mark while the services are rendered. Examples of the latter might be the sign over the cleaners showing the name of the cleaners and that a clothes cleaning or laundering business is being operated on those premises. Since a service is not a tangible object and therefore cannot have a mark affixed to it, the service mark specimen must display the service mark in “direct association” with the services. This means that consumers must see the mark in close proximity to a description or advertisement for the service to which it refers.

When do I Have to Submit a Specimen?

Use of the mark in commerce is a prerequisite for registration of any mark by a U.S. entity, no matter if the filing basis is “Intent-to-Use” or “Use-in-Commerce.” (Applications filed by a non-U.S. entity that can be based upon a non-U.S. registration owned by the applicant are the exception to this. However, those non-U.S. owners of a U.S. registration will be required to show proof of use in U.S. Commerce to maintain the registration years later.

What are the Requirements for a Specimen?

One specimen for each International Class must be submitted. The specimens must follow the following rules:

• It must be a real example of how the mark is actually used in commerce (no mock-up, digitally created, or altered image).
• Show the mark in close connection with goods/services as described above.
• Be an appropriate type of specimen for goods or services as described above. The mark must also be consumer-facing, i.e the mark on a press release or an initial public offering are not used as a mark.
• The mark on the specimen must illustrate the mark “substantially exactly” as it appears on the mark drawing of the application.
• The mark must be used by the application owner or an authorized licensee.
• Show your mark prominently so that consumers would perceive it as a source indicator for the goods/services. The mark should “shout out” who is the manufacturer/producer of the goods or services.
• Any specimens that are screenshots of webpages must show the URL and date accessed so the examiner can see the mark usage on the internet him or herself.
• You should not submit physical evidence to the United State Patent and Trademark Office (“USPTO”), but instead, take a picture, scan, or copy the physical specimen so you can transmit it electronically to the USPTO.

Conclusion

Understanding the specimen requirements for your mark is crucial for getting, keeping and enforcing a trademark or service mark in the U.S. U.S. trademark rights are created and exist only when the mark is actually used in a marketplace. This is a unique feature of U.S. trademark law. If you have questions or need assistance with selecting, protecting, and properly using your mark, we suggest you speak with a qualified trademark attorney to guide you on what is best for your mark and business.

[1] 15 U.S.C. § 1127.

[2] Id.

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