Trademark Specimens in the United States – How To Navigate the United States Trademark Office’s Exacting Requirements

To obtain or renew a United States trademark registration, brand owners must file one or more specimens of use.[1].

A specimen is a document that shows the manner in which a trademark is seen by the public.  A specimen can be a photograph of a label or hangtag, a screen capture from a website, a copy of a brochure, or some other document that shows the trademark used in connection with the goods/services included in an application or registration.

Understanding what is an appropriate specimen can be complex, especially for people outside of the United States, since the trademark offices of most other countries do not require specimens of use.

Clients (and foreign counsel instructing U.S. lawyers) should understand these basic principles:

  1. at least one specimen must be provided for each class covered by the application;
  2. specimens must show a relation between the mark and the goods or services covered by the application;
  3. the goods or services must be sold to consumers in the United States;
  4. for any specimens comprised of printouts from a webpage, the United States Trademark Office (the “Trademark Office”) requires the URL and the date that the webpage was accessed;
  5. specimens should not be digitally altered; and
  6. attempted renewal of a registration for goods/services not in use in the United States may result in the imposition of fees during an audit.

We address each of these points below.

1.  At Least One Specimen Per Class

At least one specimen must be provided for each class the application covers.

For example, if an application is filed in just one class (e.g., Class 25 for “clothing, namely, t-shirts”), then the specimen could be a photograph showing the item itself with the mark on it.  (Note that for clothing, a mark cannot be used in an ornamental way on a clothing item, but must be used on a label, hangtag or otherwise as a brand.)

If an application class designates many goods within a class (e.g., Class 25 for “clothing, namely, t-shirts, sweaters, jackets, pants, shorts, sweatpants, jeans, skirts, dresses, underwear, socks and scarves”), then it’s a good practice to submit several specimens showing different items, to avoid a random audit.  When an application is filed for many goods but only includes a single specimen, the Trademark Office may request additional specimens to confirm that there is use in connection with all of the specified goods.

If an application is filed in multiple classes (e.g., Class 9 for a downloadable mobile app, Class 16 for printed materials, Class 25 for clothing, Class 41 for an entertainment website and Class 42 for online software), there must be at least one specimen for each class, showing the mark used in connection with the specified goods/services.

2.  Specimen Must Show a Relation Between the Mark and the Goods or Services

Every specimen must show a relation between the mark and the goods or services the application covers.

For example, if an application is filed in Class 25 for “clothing, namely, t-shirts,” it is not enough to submit a close-up photograph of the label.  There must also be another photograph that shows the label on the t-shirt.

If an application is filed in Class 35 for “advertising services,” it is not enough to submit a screen capture of the homepage of a website, showing the mark and the brand owner’s address.  There must be another screen capture of the “about us” or another page describing the client’s advertising services.

If an application is filed in Class 42 for a “SaaS (software as a service) platform that sells tickets to events,” it is insufficient to provide an advertisement for the services.  The Trademark Office requires screen captures from within the software platform, showing the mark and the function of the software.

3.  The Goods or Services Must Be Sold to Consumers in the United States

Brand owners within the United States are likely using their marks in connection with goods or services sold in the United States.  However, brand owners outside of the United States are often confused by this requirement.

In order to obtain a registration based on “use in commerce,” and when any trademark registration needs to be renewed (including U.S. registrations that are based on a foreign registration), brand owners must be selling their goods or rendering their services in the United States.

For example, if an Australian company obtains a registration in the United States based on an Australian trademark registration (Section 44(e)), then five to six years following the United States registration date, it must maintain the registration by filing a declaration of use.  While proof of use would not have been required when the Australian company filed its application, proof of use is required to maintain the registration.

If the Australian company sells clothing in Australia, but hasn’t made any sales in the United States, then it cannot maintain the U.S. registration.  Moreover, if the trademark registration covers Class 25 for “clothing, namely, t-shirts, sweaters, jackets, pants, shorts, sweatpants, jeans, skirts, dresses, underwear, socks and scarves,” but the Australian company has only sold t-shirts in the United States, then all of the unsold items would have to be deleted from the registration.

4.  URL and Access Date Required for Webpage Specimens

For any specimens comprised of printouts from a webpage (a PDF), declarations of use must include the URL and the date that the webpage was accessed in the application or renewal form.  This is a relatively new requirement meant to assist the Trademark Office in confirming that the use is current and genuine.

For example, if an application is filed in Class 35 for “advertising services,” and if the brand owner has a website, then it is easy to obtain screen captures from the website and provide the URL and date of access.

If an application is filed in Class 42 for a “SaaS platform that sells tickets to events,” and if the SaaS platform is not available to the public, then the client will have to provide various screen captures, the corresponding URLs (even if the URLs won’t be accessible), and the date that the screen captures were taken.

5.  Specimens Cannot Be Digitally Altered

Specimens submitted to the Trademark Office cannot be digitally altered.  This requirement is designed to prevent the submission of fraudulent, photoshopped specimens.

For example, if an application is filed in Class 30 for cookies, the specimen should not be a printout of a photoshopped, edited box of cookies from the client’s website.  The best specimen would be a snapshot of an actual box of cookies.

6.  Avoid New Fees for Requesting to Delete Goods, Services or Classes

The Trademark Office randomly audits registrations as they are renewed.   As discussed above, registrations are entitled to be maintained only for goods or services for which the trademark is in use in commerce (or for which temporary nonuse is excused due to special circumstances).  If the Trademark Office audits a registration maintenance filing, the registrant will be required to prove use of its trademark for additional goods and services in the registration. If the registrant does not respond to the audit, its registration will be canceled. If the registrant responds but does not provide proof of use for those goods or services, it will be required to delete them from the registration. In addition, the registrant must pay a $250 deletion fee per class each time goods or services are removed, and possibly a $100 deficiency surcharge, or the entire registration will be canceled.

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It is critical that appropriate specimens be submitted in order to register or renew a trademark in the United States.  Understanding the United States Trademark Office’s rules about specimens will enable the efficient preparation of trademark applications and renewals, and minimize the chance of a costly Office Action or audit.

 

 

[1] One exception to this rule is if a US application is filed based on a foreign registration, in which case a specimen isn’t required until the registration is maintained 5-6 years following the registration date.