In this article, you will learn the common reasons for USPTO specimen rejection, such as material alteration, non-use in commerce, mismatch with goods or services, and incomplete information. You'll also discover how to handle a rejection by understanding the grounds, amending the original specimen, submitting a new specimen, requesting reconsideration, and appealing the decision. Additionally, the article covers the process of requesting an extension of time to correct specimen issues and the consequences of application abandonment due to rejection. Finally, it provides information on how to revive an abandoned application and the timeline for filing a petition to revive.

What happens if the submitted specimen is rejected by the USPTO

The United States Patent and Trademark Office (USPTO) provides trademark protection to businesses asserting their trademark rights. The USPTO examines various aspects of a trademark application, including the submitted trademark specimen, which serves as evidence of the mark's use in commerce. The specimen's acceptance is crucial for the application process. This article discusses some common reasons for specimen rejections by the USPTO, which may help trademark applicants avoid these mistakes during the registration process.

Material Alteration of the Specimen

One of the reasons the USPTO can reject a specimen is if it is materially altered in some way. Material alteration occurs when the trademark is modified to a considerable extent from the original or amended drawings filed with the application. The alteration should be such that it creates a substantially different mark. If the USPTO finds that the specimen submitted has material changes when compared to the original trademark application, the trademark specimen will be rejected during the review process.

Examples of material alterations include adding or removing words, changing the font, altering the style, orientation, or arrangement of the design elements, changing the color, or adding or removing design elements. To avoid specimen rejection due to material alteration, applicants should ensure their specimens closely match the trademark drawing filed in their application.

Non-Use of the Specimen in Commerce

A core requirement for a trademark is that it must be used in commerce for the specified goods or services. A specimen submitted during the registration process must illustrate the actual trademark as used in connection with the goods or services. The USPTO may reject a specimen if they determine that it does not represent genuine use of the trademark in commerce.

Examples of non-use in commerce include mock-ups or digitally created images of a product with the mark that were never sold, promotional materials that do not reference the applied-for goods or services, or advertising materials that lack a call-to-action to purchase the goods or services. To prevent rejection, applicants should ensure they only submit specimens that showcase the actual use of their trademark in commerce for their specific goods or services.

Specimen Mismatch with Goods or Services

Another common reason for specimen rejection is a mismatch between the specimen and the goods or services listed in the trademark application. The specimen submitted must clearly indicate a connection between the mark and the goods or services. If the specimen does not correspond to the goods or services included in the application, the USPTO may reject it.

For example, a clothing brand may submit a specimen showing their logo on a t-shirt, but the application lists cell phone cases under the scope of goods or services. In this instance, the USPTO would likely reject the specimen due to a mismatch between the goods presented and the goods listed in the application. To avoid specimen rejection for this reason, applicants should ensure they provide specimen evidence representing the use of their trademark for the specific goods or services listed in their application.

Incomplete or Missing Information

The USPTO may also reject a specimen due to incomplete or missing information. For example, a submitted webpage screenshot might not show the date of access, the URL, the mark, or the goods or services offered. Other examples include a magazine advertisement missing the date of publication or a product label that does not clearly display the mark in conjunction with the specific goods or services.

Applicants should always double-check their submitted specimens for complete information, including dates, URLs, and clear connections between the mark and the goods or services. Ensuring that all required information is accurate and present in the specimen can help prevent specimen rejection by the USPTO.

Handling USPTO Specimen Rejection

A vital step in securing a trademark registration with the United States Patent and Trademark Office (USPTO) is submitting a specimen demonstrating actual use of your trademark in commerce. In some instances, the USPTO may reject a specimen for various reasons. In this article, we will discuss how to handle a USPTO specimen rejection, covering topics such as understanding the rejection grounds, amending the original specimen, submitting a new specimen, requesting reconsideration for a rejected specimen, and appealing the USPTO rejection decision.

Understanding the Rejection Grounds

The first step in addressing a USPTO specimen rejection is to understand the reasons for rejection. The examining attorney will provide a detailed explanation in the Office action outlining the specific grounds for refusal. These refusal grounds may include issues such as: - The specimen does not show the trademark used in connection with the goods/services identified in the application. - The submitted specimen is considered mere advertising and not a display associated with the goods. - The specimen is not in use in U.S. commerce on or before the filing date or the alleged use date.

In some cases, the examining attorney might require additional information to support the specimen's acceptability. It is crucial to understand the specific refusal grounds before moving forward with amending, submitting a new specimen, or appealing the decision.

Amending the Original Specimen

If you believe that the initial specimen can be modified to address the examiner's concerns, you can file a response with an amended specimen. Keep in mind that the amendment should not change the trademark substantially. Any amendment should still accurately represent the trademark as used in commerce in connection with the goods/services identified in the application.

Examples of acceptable amendments may include: - Removing extraneous information that was not part of the trademark - Providing clearer images or descriptions of the trademark's use - Adding context or explanation to demonstrate proper use in commerce

If the examining attorney finds the amended specimen to be sufficient, they may accept it, and the examination process will continue.

Submitting a New Specimen

If the original specimen cannot be amended to address the USPTO's concerns and rejection grounds, you can submit a new, entirely different specimen as part of your response. This new specimen should meet all the USPTO's requirements for an acceptable specimen and should demonstrate actual use of the trademark in commerce on or before the filing date or the claimed use date.

When submitting the new specimen, be sure to provide all the necessary information for the examining attorney to assess its acceptability. This may include context, dates of use, and explanations of how the trademark is associated with the goods/services in the application.

Requesting Reconsideration for Rejected Specimen

If you disagree with the examining attorney's rejection of the specimen and believe the original specimen sufficiently proves the use of the trademark in commerce, you can request further reconsideration. To do this, submit a response that addresses the refusal grounds and provide clear, persuasive arguments as to why the specimen should be accepted.

Providing additional context, legal precedence, or industry standards can strengthen your case and may lead to the examining attorney reversing their initial decision.

Appealing the USPTO Rejection Decision

If all attempts to resolve the specimen rejection fail and the examining attorney maintains their refusal, you can appeal the decision to the Trademark Trial and Appeal Board (TTAB). This process is more complex and may require the assistance of an experienced trademark attorney.

During an appeal, you will need to file a Notice of Appeal and provide a detailed brief outlining your arguments and legal basis for challenging the examining attorney's decision. The TTAB will then review the case, considering both parties' arguments, and ultimately decide to either maintain the rejection or reverse the decision, allowing the trademark registration process to proceed.

In summary, handling a USPTO specimen rejection involves understanding the grounds for rejection, amending the original specimen, submitting a new specimen, requesting reconsideration, or appealing the decision. Each step requires careful analysis and a clear understanding of USPTO requirements for acceptable specimens related to trademark registration.

Extension of Time to Correct Specimen Issues

When filing a trademark application, it is essential to provide an accurate and acceptable specimen that demonstrates the use of the proposed mark in commerce. At times, the United States Patent and Trademark Office (USPTO) might find the submitted specimen to be insufficient, leading to the need for a correction or replacement. In such cases, the applicant can request an extension of time to correct specimen issues as per the USPTO guidelines.

First-Time Requests for Extension of Time

A first-time request for an extension of time refers to the initial request made by an applicant to obtain additional time to respond to the USPTO's request for a proper specimen that demonstrates the use of the proposed trademark in commerce.

To request a first-time extension of time, the applicant should file a written request with the USPTO, stating the reasons for the extension and the desired additional time. A first-time request can generally be granted for up to six months from the date of the initial office action, which pointed out the specimen issues.

While the USPTO is generally lenient with first-time requests for extensions, it is crucial to have a solid reason for needing the additional time. Common reasons for requesting an extension include the need to gather more information or documents, investigate alternative specimens, or consult with counsel.

Consecutive Requests for Extension of Time

Consecutive requests for an extension of time refer to subsequent requests made by an applicant for additional time to rectify specimen issues after the first-time extension has been granted by the USPTO. While consecutive extensions in time are possible, the USPTO's handling of these requests is stricter as compared to first-time requests.

Each consecutive request should be well-supported by a reasonable explanation and must be filed before the expiration of the previously granted extension period. These explanations must go beyond the reasoning provided in the prior requests and should establish the ongoing efforts to correct the specimen issues.

However, consecutive requests for the extension of time are not guaranteed and are subject to USPTO discretion. It is essential to understand that the USPTO may deny the request if they feel that the applicant has not provided sufficient reason to warrant additional time.

Requirements and Deadlines for Filing Extension

To successfully request an extension of time to correct specimen issues, certain requirements and deadlines must be met by the applicant.

  1. The request for extension must be made in writing and filed with USPTO through the Trademark Electronic Application System (TEAS) or as a separate response to the office action.
  2. The request should be filed before the expiration of the six-month response period provided in the office action, or before the expiration of the previously granted extension period in case of consecutive requests.
  3. The written request should clearly explain the reasons for the requested extension and explicitly state the desired additional time, which is usually calculated in increments of one month.
  4. Applicants may be required to pay additional fees for the requests, particularly for consecutive requests. Make sure to check the USPTO fee schedule for any applicable fees.

It is essential to promptly address the specimen issues and timely to file extension requests, as failing to do so can result in the abandonment of the trademark application. If you are unsure about the process or the requirements to request an extension of time, it is advisable to consult with a trademark attorney or agent for further guidance.

Abandonment Due to Specimen Rejection

When filing a trademark application, the applicant must provide a specimen that demonstrates the mark's use in commerce. Specimens can be product packaging, labels, or advertising material that clearly display the trademark being used with the goods or services it's intended to represent. However, if the United States Patent and Trademark Office (USPTO) determines that the provided sample is insufficient or does not meet the requirements to represent the mark's commercial use, they may reject the specimen and request a new one.

In such cases, the applicant is given a six-month deadline to submit a new specimen. Failure to submit an acceptable substitute within the specified timeframe may result in the abandonment of the trademark application. Abandonment means the application will not be registered, and the applicant loses the benefits of the filing date.

Reviving an Abandoned Application

If a trademark application has been abandoned due to an inadequate specimen, the applicant can still revive the application by following the proper procedures and meeting the required conditions. To revive an abandoned application, the applicant must file a Petition to Revive and pay the associated fees.

The Petition to Revive is a formal request to the USPTO to reconsider the abandoned application. It must include: 1. An explanation of the delay in submitting an acceptable specimen 2. A statement that the applicant did not receive, or timely respond to, the USPTO's Office Action or Notice of Allowance. 3. The required fee for filing a Petition to Revive.

Along with the Petition to Revive, the applicant should also submit the acceptable specimen showing the commercial use of the mark that led to abandonment. The new specimen must comply with USPTO rules and regulations.

Timeline for Filing a Petition to Revive

The timing for filing a Petition to Revive is crucial. Applicants are expected to act promptly upon discovering the abandonment. Generally, the USPTO gives a two-month grace period from the date of abandonment to file the Petition to Revive. Failure to submit the petition within the two-month window may result in the application remaining abandoned and ineligible for revival.

In some cases, the applicant may be unaware of the abandonment due to not receiving the necessary correspondence from the USPTO. In such instances, the petitioner must prove that they did not receive the Office Action or Notice of Allowance and had been diligently monitoring the status of the application. Upon successful presentation of the evidence, the USPTO may grant the Petition to Revive.

To avoid complications and the risk of losing valuable trademark rights, applicants should be vigilant in addressing any issues that may arise during the application process, particularly those involving specimen rejection. Diligent monitoring of application status, prompt response to USPTO communications, and timely submission of acceptable specimens are essential to ensure successful registration and protection of a trademark.

1. What are common reasons for the USPTO to reject a submitted specimen?

The USPTO typically rejects specimens if they fail to demonstrate trademark use, do not display the trademark, are mock-ups or digitally-created, lack proper identification or fail to show a connection with the goods or services being offered in the application (USPTO, n.d.).

2. Can a rejected specimen be appealed or resubmitted?

Yes, if a specimen is rejected, applicants may submit a new specimen within six months of the rejection notice or appeal the refusal by filing a request for reconsideration with the USPTO Examining Attorney, presenting additional arguments or evidence (USPTO, n.d.).

3. Is there a required format for a specimen submission?

Specimens must be submitted in the format prescribed by USPTO, which can either be a JPG or PDF image for electronic submissions. Physical specimens are only accepted in certain circumstances, and the size of the image should not exceed 3.5 x 3.5 inches (USPTO, n.d.).

4. What is the best practice to avoid rejection of a specimen at the USPTO?

To avoid rejection, ensure that the submitted specimen illustrates proper use of the trademark in commerce, clearly displays the mark as intended, and is an actual example of how the mark is used with the goods or services in the application (USPTO, n.d.).

5. What are the consequences if no acceptable specimens are submitted within the response timeframe?

Failure to provide acceptable specimens within the allotted time frame, currently six months from the rejection notice, may result in the abandoment of the trademark application, and applicants will have to start the process from scratch (USPTO, n.d.).

6. How does a specimen rejection affect the filing date or priority claims?

A specimen rejection does not alter the filing date or priority claims. However, if no acceptable specimen is submitted within the response timeframe, the abandonment of the application can result in losing priority rights associated with the original filing date (USPTO, n.d.). Reference: U.S. Patent and Trademark Office (n.d.). Trademarks. Retrieved from