Trademark Specimen

What is a Trademark Specimen

A trademark specimen is a photo or a screenshot showing how you actually use a trademark in commerce in connection with your goods and services, to indicate the source or owner of the trademark.
For example, if you have applied for goods, you’ll want to submit a picture of your trademark on a label or hang tag that is attached to the goods.

Packaging that shows the trademark is also acceptable.

For example, if your goods are t-shirts, you may submit an up-close digital photograph of the:

  • trademark appearing on a hang tag attached to a t-shirt;
  • trademark stitched onto the collar label; or
  • trademark stitched onto the bottom hem of the t-shirt.

Examples of Acceptable Trademark Specimens

An acceptable trademark specimen for a t-shirt is usually a hang tag attached to the t-shirt. For example, see the following specimen supporting USPTO Reg. 4831335, which shows use of the quote: I CAN’T KEEP CALM I’M TWO on a t-shirt.

USPTO Reg. 4831335 claimed the trademark on the following goods in class 025: Baseball caps and hats; Body shirts; Body suits; Body suits for babies; Crew neck sweaters; Graphic T-shirts; Hooded sweatshirts; Short-sleeved or long-sleeved t-shirts; Sweaters; Sweatshirts; T-shirts; V-neck sweaters.

I CAN'T KEEP CALM I'M TWO trademark specimen for a purple-shirt

When a trademark is used on the goods themselves, the trademark should appear where and how consumers expect to see a trademark, and not merely as a decorative or ornamental design.

However, there are close cases where the USPTO accepts a slogan in a large font on the goods as a specimen because the slogan is not merely an ornamental design.

For example, the USPTO accepted the following trademark specimen for the word DO on a t-shirt, in USPTO SN 86362271:

DO
DO trademark in a large font on a t-shirt

And the USPTO accepted following trademark specimen from Nike, Inc., for the word Nike on a swoosh design for t-shirts in USPTO SN 75975473:

Nike swoosh trademark specimen
USPTO accepted Nike swoosh trademark specimen on a t-shirt

The USPTO Trademark Examiner’s Manual “TMEP” provides a full explanation:

904.03    Material Appropriate as Specimens for Trademarks

For a trademark application under §1(a), allegation of use in an application under §1(b), or affidavit of use under §8 or §71 of the Trademark Act, the specimen must show the mark as used on or in connection with the goods in commerce.  A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods.  37 C.F.R. §2.56(b)(1).  A photocopy or other reproduction of a specimen of the mark as used on or in connection with the goods is acceptable.  37 C.F.R. §2.56(c).

See TMEP §§1301.04 et seq. regarding service mark specimens, TMEP §1304.02(a)(i)(C) regarding collective membership mark specimens, TMEP §1303.01(a)(i)(C) regarding collective trademark and collective service mark specimens, and TMEP §1306.02(a)(i)(B) regarding certification mark specimens.

Example of an Unacceptable Trademark Specimen

If your trademark is a design, and the design appears to cover most of the t-shirt, it is not an indicator of the source of the t-shirt because the design is used in an ornamental fashion. So a photo of the t-shirt showing the ornamental design is not an acceptable trademark specimen.

For example, in the USPTO application for the quote KEEP CALM AND RETURN FIRE where the applicant was claiming a service, the examiner rejected the unacceptable specimen and stated:

The initial specimens were merely shirts showing the mark being used as an ornamental slogan on the shirts.

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the services specified in International Class 35 in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Chengdu AOBI Info. Tech. Co., 111 USPQ2d 2080, 2081-82 (TTAB 2011); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  Specifically, the applicant’s services are identified as “Charitable services, namely, organizing and conducting volunteer programs and community service projects aimed at increasing support and morale of families of deceased war veterans, war veterans, current members and future members of the United States military.” Therefore, the specimen must show use in connection with promoting or advertising the applicant’s “organizing and conducting volunteer programs.” The initial specimens were merely shirts showing the mark being used as an ornamental slogan on the shirts. The specimen submitted in the July 7, 2015 response shows the retail sale of shirts using the slogan ornamentally on the chest. None of these specimens refer to the applicant’s “volunteer programs” in any manner. The specimen merely refers to fundraising for the Reconnaissance Foundation and the slogan is not used even in reference to those services. The proposed mark is merely shown used as an ornamental slogan on a shirt.

Specimens used in the promotion or advertising of the services must explicitly reference the services to establish a direct association between the mark and the services. In re Monograms Am., Inc., 51 USPQ2d 1317, 1318 (TTAB 1999); TMEP §1301.04(f)(ii).

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use.

(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/specimen.jsp.

Since the specimens do not show use in connection with the identified services, registration is refused under Trademark Act Sections 1 and 45.

Keep Calm and Return Fire Trademark Specimen 2015

PS: The content of this blog is not legal advice. You should read the TMEP in detail on your own or call a trademark attorney to discuss your particular matter to protect your rights.

These points of authority do not necessarily reflect the views of the writer. This blog is not legal advice. These posts are just notes.

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