FREQUENTLY ASKED QUESTIONS What Is An Acceptable Specimen of Use?

Were you required to provide an acceptable specimen of use for your trademark application?

What does that mean?

Check this video out!



After your trademark is allowed or registered, when you're filing your maintenance between your 5th and 6th anniversary of the registration, and we actually have 2 separate videos, one about the post-allowance statement of use and the other is about the post-registration statement of use—both of these instances in the U.S. would require you to file a specimen showing that you are using the trademark. And also in the U.S., when you file your trademark application on the basis of existing use in commerce, rather than intent-to-use, you also need to file a specimen of use.

So there are 3 scenarios when you would be required to file that. First is when you're filing a trademark based on use. The other one is when you're filing a post-allowance statement of use if you filed your TM application based on intent-to-use and your trademark was allowed—for it to be registered you need to file a statement of use. And finally, after the trademark gets registered, between the 5th and 6th anniversary of the registration you still need to show to the Trademarks Office that you are still actively using the trademark, and you still need to show them the Statement of Use. So, in that Statement of Use, you need to show the specimen, you need to attach a specimen that shows evidence that you are properly using the trademark in commerce.

That requires that you understand what "using a trademark" actually means. So, for products, the use of a product from the trademark perspective means that you are selling the product that's marked with a brand, or you are invoicing the buyers, and the invoice has a trademark on it. If it is an on-line web-site, you need to have a store from which your market can buy your product, and basically touch or see, the name, the logo, or tagline—whatever brand you're trying to trademark. So, the buyer needs to be able to see that brand in connection with a purchase or the product itself. So either I'm unpacking the product and it's on the packaging, or the product itself, or the invoice, or during the process of the purchase. But importantly, simply having a website about the product, advertising, is not considered proper use in commerce for the product, because it is not a part of the purchase process, it's part of the marketing, which is not considered proper use.

Contrastingly, a trademark is deemed to be properly used in connection with a service if you are offering the service, during the performing of the service or during the advertising for that service, as long as you are able, willing, and ready to provide that service to that market. So unlike products, with services, advertising is deemed proper use. If you have a website and you put your trademark there, that will be considered proper use.

When you are required to file that specimen of use, showing to the trademark examiner, to the Trademarks Office, that your trademark is in use, make sure that you supply them with all the photographs, with all the scans, invoices for the products, and screenshots for the services. Or let's say, you're a restaurant, go take a photograph, where it will show that your restaurant is still open, maybe show the menu, show the invoice, be creative!

But make sure that you properly understand that simply having an idea for the brand is not good enough. Just because you registered a domain name that you think is a great name for the business is not good enough. It is not a proper specimen of use. You have to actually be offering your products, offering your services, and using your trademark in connection therewith.

Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.