Why are specimens required for trademark applications and what is an acceptable specimen?
Why is a specimen required?
In order for a trademark owner to receive federal trademark registration, the business must show that the trademark is actually being used in commerce. If there were no requirement to submit specimens, anyone could receive trademark protection for trademarks they never used. This would create a chilling effect for businesses because they would be precluded from using words, symbols or phrases that are not used by other companies. To combat this problem, United States Patent and Trademark Office requires trademark applicants to submit a specimen showing use of the trademark in commerce.
The relevant section of the Trademark Manual of Examining Procedure (TMEP), the manual followed by the Trademark Examining Attorneys at the USPTO, regarding specimens is TMEP § 904. In short, the specimen submitted must show the applied for trademark in use in connection with the applied for goods and services. For applications filed in multiple classes of goods and/or services, multiple specimens will likely be required, i.e. at least one specimen per a class. While only one specimen per class is required, best practice is to submit more than one specimen, especially if many types of goods or services are in the same class.
What is an acceptable specimen showing the trademark used in commerce?
Products/goods - trademark registration for products is very common and many trademarks for products are known worldwide, such as Coca-Cola or Ford. Acceptable specimens for products must show use of the trademark in commerce. Examples of acceptable specimens for goods include:
Product packaging or hang tags bearing the trademark
In-store displays showing the product showing the trademark
Screenshot of the product being sold online in close proximity to the trademark
Photographs of the trademark on the actual product
Services - many people are confused about what is a service as opposed to a good, and why they require a different kind of specimen. Services are things people or companies provide for a fee, such as legal services or construction services. Specimens that are acceptable for services include:
Advertising materials online or in print
Photographs of signage, e.g. on billboards or at a business headquarters
Examples of acceptable specimens:
The trademark WRITE IT DOWN registered for journals is affixed to the actual product.
The trademark SOLO in connection with cups is shown clearly on the product packaging.
A newspaper advertisement for BARON'S APPLIANCES is an acceptable specimen for retail store services.
This is an acceptable specimen for trademark NIKE because it shows the goods (sneakers) in proximity to the trademark and an add to cart/checkout button.
This would be an acceptable specimen for Wal-Mart's online retail store services.
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