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!

THINKING OF TRADEMARKING YOU BRAND?

TRANSCRIPT

One of the common reasons trademark applications get refused in the U.S. is because trademark applicants fail to submit acceptable specimens of use for all goods and services listed in their trademark applications.

My name is Andrei Mincov. I'm the founder of Trademark Factory, and in this video, I'll share with you everything you need to know about specimens of use, what makes them acceptable, as well as the dos and don'ts around specimens of use.

In the second part of this video, we'll even go through specific industries with which trademark owners usually struggle to provide acceptable specimens of use the most.

Ready?

Alright, a few important introductory words of wisdom. Since we're going to be talking about specimens of use, it's important to understand what "use" actually is. "Trademark Use" is a legal term that relates to using your brand in commerce as a trademark to identify your products & services.

In most countries, you don't need to prove use to register or renew your trademark. However, you canNOT register or renew a U.S. trademark until and unless you show acceptable evidence of "use" of your TM as filed (or as registered) for all products and services listed in your TM application. Let me repeat that: In the U.S., you canNOT register or renew your trademark until and unless you show acceptable evidence of "use" of your TM as filed (or as registered) for all products and services listed in your TM application.

Now, there are different rules for what constitutes use of your trademark in connection with physical products and what constitutes the use of your trademark in connection with services.

A TM is "used" in association with products when the public can see the TM on the products themselves, their packaging, tags, labels, or (in some cases) documentation—at the time the products are sold or transported for sale. A TM is "used" in association with services when the public can see the TM during sale, rendition, or advertising of the services.

As you can probably tell already, it's easier to prove use of your trademark in connection with services, because unlike with physical products, simply showing that you are using your trademark to ADVERTISE your services is enough to prove use of your trademark, whereas using your trademark to advertise your products is not enough.

But I'm jumping ahead of myself. Let's go through several examples of what constitutes acceptable specimens of use.

#1: When you place your TM on the product itself

So the specimen would show a photograph of your products with your trademark clearly visible on the product.

#2: TM on labels and tags

If your product has labels or tags, you can show a photograph of those tags bearing your trademark. We'll talk about this in detail in the second part of the video, but placing your TM on labels and tags is the most widely accepted form of a specimen of use for apparel.

#3: TM on packaging

If you sell your products in a box or some other sort of packaging and the package has your trademark printed on it, provide a photograph of the packaging to show use.

#4: Displays where products are sold

You may also show photographs of branded displays, fridges, and similar things that hold your products for sale in public.

#5: Webpages with Buy Now feature

Remember, simply advertising your products is not considered proper use of a trademark in connection with products. A website is generally considered advertising, which would be fine for services, but not products. So, if you want to use your website as evidence of use of your trademark in connection with your products, it needs to be a page that clearly links your products to your trademark at a time when the public is purchasing your products.

In other words, a screenshot of the homepage that says "Buy QRSTP gadgets, they are the best" would not work. However, a screenshot of a page that says "QRSTP Gadget", shows a picture, and the price with an [ADD TO CART] button" would usually work.

#6: Webpages with download links

If you are trademarking your brand in connection with downloadable products like books, software, educational, or entertainment materials, you can show a screenshot of a webpage with the download link. Entertainment and education can be both a service and a product. For trademarking services in class 41, you simply need to show that you are advertising or making your services available.

For products, you should show the use of your trademark at the moment the public gets something tangible from you—even if it's just a downloaded file.

#7: Webpages advertising services

I already mentioned that in order to prove use in connection with services, it's sufficient to show that you are using the trademark to advertise your services. And having a website that bears your trademark where you use the trademark to advertise your service is usually sufficient. Note of warning though: if your trademark is a word mark, make sure you format it on your website to stand out from the rest of the text.  Why? Because it needs to clearly identify your services and not be used as part of your marketing copy.

#8: TV, radio, web ads for services

Similarly, if you run TV, radio, web ads for services, you can submit them as evidence of use.

#9: Marketing materials for services

Business cards, flyers, all sorts of marketing materials that show your trademark in connection with advertising your services would normally be acceptable specimens of use.

#10: Signage where services provided

A sign with the name of your store if you are trademarking your brand in class 035 for retail services, or your restaurant, or your accounting firm—all of that would serve as an acceptable specimen of use—as long as it clear what your photograph actually shows. Simply drawing your trademark on the wall would not be good enough, since you have to be able to make the case that the sign is what your customers see when they consume the service you're providing to them.

#11: Materials for use with services

Menus, band signs, banners, and other similar items could also support your use of the trademark. OK, so that's what typically works as an acceptable specimen of use. I have a few words of caution for you. First of all: your Evidence MUST BE REAL. No Photoshop or digital mockups. And yes, the USPTO is VERY serious about that kind of stuff. Your trademark can be denied or canceled if you try to sneak in doctored evidence. Simply Do NOT do it.

Second: your evidence must show the actual TM as filed. No variations are allowed. This is why when we have clients who are not sure if they're going to have a space between two words, or whether there should an exclamation mark at the end or small things like that, we always tell them, pick a variant for which you know you will be able to provide a specimen of use. 

Third: You must have evidence for all products and services you claim to be in use. If you file your trademark for a whole list of products and services in one or several classes, you are required to submit evidence at least for one of the products or services for each class. HOWEVER, the USPTO examiner may require that you provide evidence for all other products and services as well. And if you can't produce that evidence, you may find yourself in trouble and need to delete those products and services from your application.

Fourth: For specimens of use required to get your trademark registered in the U.S., you must show use of your trademark in the U.S. It means that if you are trying to trademark a brand for lawnmowing services and you provide a screenshot of a website that says you only offer your services in Canada, it may be rejected as failing to show evidence of use in the U.S.

To summarize, it's not enough for you to USE your trademark. You must have proper evidence to support it. Also, DO NOT LIE or fabricate evidence about use or dates of first use, because the USPTO may reject the application. And even if it lets it through, your trademark may be canceled for fraud in the future.

Alright, now that we've gone through the basics, let's go through several specific industries and examples.

Class 025: Apparel

Acceptable specimens of use for Apparel would include photographs showing your trademark on tags, inside your clothing, or otherwise showing your trademark as a non-dominant feature of the design of your apparel. Why non-dominant?  Because the USPTO may reject such use as merely ornamental.

We have a separate video about ornamental trademarks but the idea here is that trademarks are not supposed to cover sayings or designs for the literary or artistic value of those sayings or designs. Trademarks exist to help the market identify your products and services apart from identical or similar products and services of everyone else.

So simply placing your huge logo in the middle of a t-shirt or a baseball cap may not be considered an acceptable specimen of use. Now, to make sure we're on the same page, there is nothing wrong with placing your huge logo in the middle of a shirt or a baseball cap. It doesn't mean you can't trademark your logo. 

What it means is that in addition to placing your huge logo in the middle of your shirt or a baseball cap, you ALSO want to show that you have a small version of the same logo on a tag, or somewhere where the logo is not a dominant part of your apparel's design.

Next, Class 016: Books

In the U.S. you can only trademark a title of a SERIES of books, not a title of a single book. And since you can only trademark a title of a series of books, you need to show that the trademark is being used as a title of a series of books, which means you need to show at least 2 books under the same umbrella title. Harry Potter or For Dummies books are great examples of that.

Next, Class 009: Software as a product

Acceptable specimens of use for software as a PRODUCT (as opposed to software as a service, and we'll get to that in a moment), so acceptable specimens of use for software as a product would include photographs showing your trademark on discs, screenshots of the software itself, its packaging, or on a webpage with a clear download link

What would NOT work are pictures of ads (remember, advertising a product does not count as acceptable specimens of use). Webpages with no download link or website that don't show users getting a copy of your software would not work either.

And while we're at it, class 042: Software as a service

This is usually easier to prove. You can show screenshots of your ads, you can show a sign-in page with your trademark, or you can show your application screen itself. What wouldn't work is when you show your trademark on software that is not offered as a service to the public. For example, download links without more are typically not admissible for class 042.

Alright, moving on to Class 035: Retail & Online Sales

Acceptable specimens of use would include photographs of your trademark shown on the storefront, store signage, or on a webpage featuring your products for sale. What would NOT work are photographs showing your trademark on specific products being sold or not showing the sale of products. For example, a photograph with IKEA furniture may prove use of the trademark in connection with the product, furniture, but it does not show the use of the trademark in connection with retail sales as a service. Similarly, simply showing a review website that talks about mattresses does not demonstrate the use of the trademark in connection with online sale services.

Next, we have Class 021: Mugs, Water Bottles

What works is if you show your trademark on the bottom of the mug or otherwise as a non-dominant design of the bottle, etc. Really, it's the same idea here as with clothing. Simply slapping your logo as the dominant design on someone else's bottle doesn't make it a legitimate use of your trademark in connection with bottles.

On to Class 018: Bags

Acceptable specimens would include photographs of your trademark on tags, locks, anywhere inside the bag. Same idea as with clothing or mugs. As long as the brand is not a dominant design feature of the bag, it normally qualifies. And conversely, if all you do is slap your logo on a generic bag, it may not support the use of your trademark in connection with bags. Might go through but don't bet your farm on it.

And finally Podcasts.

Podcasts, can be both class 009 for podcasts as a product, typically referring to downloadable podcasts, and class 041 for services, typically referring to the educational / entertainment services provided in the form of a podcast. As you can probably tell by now, the evidence in support of these two classes would be very different.

For downloadable podcasts in class 9, you must show the trademark in the context of how people can DOWNLOAD your podcast. Yes, there are third-party tools that allow you to download pretty much any streaming content, but if you can't show the download link provided for through the platform, it will not serve as an acceptable specimen of use.

As for class 041, all you need to do is show the trademark in connection with the education or entertainment that your podcast provides. So the same screenshot of a page without the download link can well qualify as evidence to support the use of your trademark in class 041. What won't work as evidence is when your specimen does not show how the public can consume the podcast. A screenshot of a homepage that says that you have a podcast is not enough. A menu item that mentions your podcast is not enough. You must provide evidence that shows specifically where and how the public can consume your podcast.

So there you have it. As you can see, there are a lot of tricky rules around specimens of use. In fact, this is probably the topic that generates the most back-and-forth between us and our clients because we make sure that the evidence you submit to support your trademark applications is likely to be accepted by the USPTO.

Sometimes, it even leads to frustration with email exchanges that go along the lines of: "This is my brand, I offer these services and I sell these products, what else do you want from me?"

"We need you to provide a specimen of use that the USPTO will accept!"

"But what exactly do you need from me? Why isn't the PDF I sent you acceptable?"

"Well, it's because of this and that..."

"OK, what about this screenshot? Will that work?"

and on and on and on. Don't get me wrong, I get it. We don't expect our clients to be experts in trademarking. That's why they hire us to register their trademarks with a guaranteed result for a guaranteed budget. Over the years, we've figured out how to explain these requirements in a much simpler way, so the exchanges like these are now an exception rather than the rule.

And this video is basically the summary of all of that.

If you are a Trademark Factory client and we sent you a link to this video as we're finalizing your trademark application or registration, I want to personally thank you for watching it. I'm sure it will help you make your interaction with our legal team much easier. And if you're not a Trademark Factory client yet, but you have a brand you want to trademark—what are you waiting for? 

Follow the link in the description and schedule your free call with one of our strategy advisors—and they'll help you get started with the process. We will either help you trademark your brand with a guaranteed result for a guaranteed budget—or you get all your money back.

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.