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.

Specimens need to be based on real goods, not mock ups, and the goods have to be sold in US Commerce. So don’t bother sending in a photo of the products on your client’s desk in South Korea.

As the attorney of record, you are responsible for submitting true and accurate specimens for your foreign clients.

Trademark Specimen Audits

The USPTO is performing random audits of US trademark registrations, after you file a Section 8 or 71 declaration of use, to assess and promote the accuracy and integrity of the trademark register. Your client’s registration may be randomly selected for audit to determine whether the mark is in use with all of the goods identified in the registration.

There is a voluntary removal of goods and services program available now, at no charge. In the near future, registrations that fail an audit will be charged fees to delete goods and services. Attorneys will be sanctioned at the USPTO’s OED for signing false statements of use.

The USPTO is also auditing new registrations. The USPTO has implemented a program that analyzes specimens and compares them to specimens filed in other applications. Duplicate specimens with the mark changed are being caught in audits. This is considered fraud on the PTO.

If your client’s trademark claims more than one item in given class, the USPTO may randomly ask you to support the claims for additional goods shortly after registration. The USPTO and other potential applicants want a clean register. Don’t throw in hats and socks if your client only has specimens of t-shirts sold in commerce.

It’s was shocking to hear USPTO Commissioner Denison’s report about the preliminary results of the audit program at INTA 2019:

• 78% of 300 registrations with SOU’s signed by attorneys could not be substantiated within a month of registration.
• More than 50% of the claimed goods and services had to be deleted.

The lesson every attorney should take from this is that you shouldn’t just believe everything your client is telling you. Verify the facts in advance before signing a SOU. If an item can’t be verified, take it out. You don’t want to lose your privileges to act before the USPTO or be disbarred.

5 Tips on Verifying That Trademark Specimens Are Actually Being Used in Commerce for Goods

1. If the products are selling in Sams Club or another retailer, go into the retail location and find the goods on the shelf and take a picture of the goods displayed in commerce.
2. Ask your client to send you US Customs clearance forms that prove that the goods entered the US in the normal course of commerce.
3. Don’t rely on the goods that your client sends you in the mail, unless you ordered it from Amazon or eBay.
4. If the product is selling on a major platform, such as Amazon or eBay, use some competitive product audit tools such as Jungle Scout, Scoutly, Keepa, and CamelCamelCamel to check the product price history and sales ranking.
5. A trademark is not used in commerce just because a product showing the trademark is listed on website platform; there has to have been some actual sales in commerce to US-based customers.

Definition of Trademark Use in Commerce

Section 45 of the Trademark Act, 15 U.S.C. §1127, defines “commerce” as “all commerce which may lawfully be regulated by Congress.” Section 45 defines “use in commerce” as follows:

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.

For purposes of this Act, a mark shall be deemed to be in use in commerce:

(1) on goods when—

• (A) 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, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
• (B) the goods are sold or transported in commerce, and

(2) on services 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 in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

What Is Commerce

The scope of federal trademark jurisdiction is commerce that may be regulated by the U.S. Congress.15 U.S.C. §1127

The Federal Circuit decided an interesting case in Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 120 USPQ2d 1640, 1642 (Fed. Cir.2016), explaining this further.

The types of commerce encompassed in this definition are interstate, territorial, and between the United States and a foreign country.

“Territorial commerce” is commerce within a territory of the United States (e.g., Guam, Puerto Rico, American Samoa, or the U.S. Virgin Islands) or between the United States and a territory of the United States.

Intrastate use of a mark may qualify as use in commerce within the meaning of the Act if the intrastate use is of a type that would, taken in the aggregate, have a direct effect on interstate commerce. See Christian Faith Fellowship Church,841 F.3d at 993, 120 USPQ2d at 1645; (finding intrastate sale of two hats to out-of-state customer was “use in commerce” because such a transaction is “‘quintessentially economic’” and, “taken in the aggregate, would cause a substantial effect on interstate commerce”); Larry Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991) (mark used to identify restaurant services rendered at a single-location restaurant serving interstate travelers is in “use in commerce”); In re Silenus Wines, Inc.,557 F.2d 806, 194 USPQ 261 (C.C.P.A. 1977) (intrastate sale of imported wines by importer constitutes “use in commerce,” where goods bearing labels supplied by applicant were shipped to applicant in United States); In re Gastown, Inc., 326 F.2d 780, 140 USPQ 216 (C.C.P.A. 1964) (automotive service station located in one state was rendering services “in commerce” because services were available to customers travelling interstate on federal highways); U.S. Shoe Corp. v. J. Riggs West, Inc., 221 USPQ 1020 (TTAB 1984) (billiard parlor services satisfy the “use in commerce” requirements, where the record showed that applicant’s billiard parlor services were advertised in both Kansas and New York); In re G.J. Sherrard Co., 150 USPQ 311 (TTAB 1966) (hotel located in only one state has valid use of its service mark in commerce because it has out-of-state guests, has offices in many states, and advertises in national magazines); In re Federated Dep’t Stores, Inc.,137 USPQ 670 (TTAB 1963) (mark used to identify retail department store services located in one state was in use in commerce, where the mark was used on credit cards issued to out-of-state residents, and on catalogs and advertisements shipped to out-of-state customers).

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.

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:

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:

Trademark Specimen for Services

Trademark Specimens for Clubs, Events, and Charities:

A trademark appearing prominently on a club’s website promoting their services may be acceptable. In addition there serveral other options for trademark specimens, such as:

• Club signage
• Printed table tops
• Event banner
• Club advertisements
• Brochures
• Membership cards
• Award certificates
• Charitable receipts
• Printed materials for soliciting donations

The specimen has to be active at the time of filing. Have alternative backup specimens too. Your client can’t create a new specimen after filing a 1(a) application.

Just tell your client to create a few different specimens for use at their next event and then file photographs taken at the event. The mark must be used in association with the services, so t-shirts alone may not be enough.

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.

USPTO Video on Specimens For Goods

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.

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.