If you received an office action refusing your specimen of use, you are in the right place. In this post, you will learn about:
- What a specimen of use is.
- The difference between the specimen and drawing.
- Fixing specimen pitfalls.
If you do not know what an office action is, read this post first: What is an office action?
I. What Is a Specimen of Use?
A specimen of use is evidentiary proof that a trademark applicant has used their mark in commerce in connection with the goods and services identified in their application. The Trademark Manual of Examining Procedure (TMEP) has a whole section dedicated to specimens (Section 904).
Specimens of use are required for all trademark applications before the USPTO, though they may be required at different times in the examination process depending on the filing basis of the trademark application. If you do not submit a specimen, or if the specimen you submitted is unsatisfactory, your application will receive an office action refusal. If you fail to fix that refusal, your application will be abandoned (cancelled), and the USPTO will not return your application fees.
Specimens can come in many shapes and sizes. The specimen a trademark applicant submits will depend on the goods or services identified in their application. For example, the owner of an ecommerce store might submit a screenshot of their website as a sufficient specimen if their services are “online retail store services.” A clothing brand might instead submit a photo of the hangtag or packaging of their goods if their goods are “tops worn as clothing.” There may be many ways to satisfy this requirement, but every permissible way must show the mark being used in a trademark way and the goods or services that are recited in the application.
II. Specimen vs. Drawing
The drawing and the specimen are separate things that serve different purposes. While the specimen shows how a mark is used, the drawing simply shows what the mark is. For standard character marks (also called word marks), the drawing is just the letters or words that create the mark: NIKE, or EXXON, or LIKE A GOOD NEIGHBOR, STATE FARM IS THERE. For logos, the drawing is the .JPEG file of the logo itself.
Whereas specimens typically involve photos of goods or services as used in commerce, drawings are much cleaner, simpler submissions. Drawings do not show any connection to any particular goods or services. They are usually not photos of the actual mark, nor are they screenshots of the mark from a website. The best drawings for logos are just exports straight from the graphic designer, and the USPTO prefers those exports to be in .JPEG format. Drawings for standard character marks are typed straight into the USPTO application (if submitted electronically), so no file upload is necessary.
Drawings are extremely important for at least two reasons. First, trademark protection depends heavily on how your mark looks. Showing exactly what your mark is in your application informs others of what you seek to register with the USPTO. It also allows others, including examining attorneys, to more efficiently search the USPTO database to compare marks. Second, the drawing controls the sufficiency of your specimen. Since your drawing shows what your mark is, its appearance in your specimen of use must be an identical match.
III. Fixing Specimen Pitfalls
If the specimen you submitted with your office action is unacceptable, it could be for any number of reasons. Below are a few common reasons for specimen refusals and how to fix them. Keep in mind, though, that these are just examples. We cannot advise on how to fix a specimen refusal without speaking with the trademark owner and reviewing their application, business, and registration goals.
A. Specimen is merely a drawing or depiction of the mark.
This type of specimen refusal usually occurs when an applicant uploads a drawing of the mark as the specimen. Examining attorneys usually provide an opportunity for an applicant to upload a substitute specimen. Applicants can take this opportunity to prove how the mark is being used in commerce by, for example, submitting a screenshot of the mark as used on packaging, in their Amazon store, or on their website (whatever is appropriate).
B. Mark shown on drawing does not match mark on specimen.
This refusal occurs when an applicant submits a specimen of use showing a mark that differs from the mark shown in the applications drawing. The drawing and specimen must be identical, literally. Even small differences in spacing or punctuation (like missing a comma), will result in this refusal.
There are at least two ways to fix this refusal, and both have their own difficulties. One way is to change the drawing to match the specimen. However, the USPTO will almost never allow an applicant to change its drawing to match its specimen. Only very minor changes will be allowed. Therefore, most applicants must resort to changing their specimens. The USPTO will almost always allow an applicant to change its specimen to match its drawing. The difficulty with this solution is that changing a specimen may require an applicant to change packaging or goods that have already been produced, which can be a significant expenditure.
C. Specimen does not show direct connection to goods/services in the application.
This type of specimen refusal occurs when the submitted specimen does not show a direct connection between the goods or services recited in the application. Proving that a mark is being used is not enough. Trademarks only exist if they are used in connection with certain goods or services. Resolving this refusal requires submission of a substitute specimen that, on its face, shows the mark and the goods or services that are distributed in connection with the mark. A website screenshot is not enough if that screenshot does not show this connection.
D. Digitally created or altered image or mockup is not an acceptable specimen.
This refusal occurs when applicants submit digital mockups of goods they may intend to sale but have not yet begun offering for sale to the public. A specimen of use proves how a mark is being used in commerce, not how an applicant intends to use the mark in commerce. An applicant faced with this type of refusal may need to find a different method to prove how their mark is being used in commerce or change their filing basis from use-based to intent-to-use (if possible).
E. Ornamental use refusal.
This refusal occurs when a mark is not being used in a trademark way. Trademarks are source-identifiers, not fashion statements. If your examining attorney believes your specimen shows your mark being used in a decorative fashion, you will receive an ornamental use refusal.
These refusals are common for clothing brands whose marks are large designs placed on the front and center of t-shirts and sweatshirts. Submitting photos of those t-shirts and sweatshirts to prove use in connection with “tops worn as clothing” usually fails, since consumers may not perceive the design shown as a source identifier. Fixing this refusal requires finding a satisfactory substitute specimen or submitting briefing to the examining attorney arguing that your mark is distinctive even as shown in the original specimen.
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These are not the only specimen refusals that exist, but they are among the most common. Do not underestimate the value of a trademark attorney in helping you sort through these refusals. Not only can a trademark attorney help you avoid or solve these problems, that attorney may be able to do so in a way that will enhance your protection and reduce challenges later.
