A trademark specimen shows how you actually use the mark in commerce in connection with your goods and services. It’s real-life evidence of how the public encounters your trademark in the marketplace. As part of the trademark registration process, the specimen you submit must be acceptable. Also, the mark used on your specimens must match the trademark in your application.
We’ll look at some examples of acceptable specimens in a minute, but in order to know what to submit, you must first know whether you are a goods provider or a services provider.
Goods or Services?
You are a goods provider if customers purchase physical products from you that bear your trademark. Like shirts, laptops or candy. On the other hand, you are a services provider if customers pay you to perform an activity for them. Like landscaping, marketing or dry cleaning.
See the difference? Goods are things that bear your trademark. Services are activities that you perform for others.
Remember, accurately identifying your goods and services is important because it determines what type of trademark specimen you need to provide. The type of trademark specimen you must submit is different if you have goods than it is if you have services.
Of course, you can use your trademark to provide goods as well as services. If you apply to register it as both, then you’ll need to submit specimens for each.
Acceptable Trademark Specimens for Goods
If you apply for goods, you may submit a photograph of the trademark on the goods themselves, or on a label or hangtag that is attached to the goods. Packaging that shows the trademark is also acceptable.
By way of illustration, let’s say your goods are “t-shirts.” You could submit a photograph of the trademark appearing on a hangtag. You could also submit a photograph showing the mark on the back of the collar. You could even submit a photograph of the trademark appearing in the left breast area of the t-shirt.
Be aware, however, that not all uses of marks on goods are acceptable. When a mark is used on goods, the mark must appear where and how consumers expect to see a trademark. It cannot merely be a decorative or ornamental design.
Examples of ornamental designs on t-shirts include situations where the mark appears in a large size across the front of the shirt. This type of design is unacceptable, as it does not show good trademark use. Consequently, you will receive an office action refusing to register your trademark.
Also remember that advertising brochures, business cards, invoices, and other internal and marketing materials are not acceptable specimens for goods. You must show use of the mark on the goods themselves or on the labeling or packaging for the goods.
Acceptable Trademark Specimens for Services
For services, on the other hand, advertising and marketing materials are acceptable, so long as the mark is shown being used in the advertising or providing of the services and the specimen references those services.
For example, if your services are “Custom imprinting of t-shirts,” you could submit a screenshot of your website that shows the mark and references those printing services. You could also submit photographs or scanned copies of your marketing materials that show the mark and reference the printing services.
Many different types of materials are acceptable as trademark specimens for services, as long as the specimen both shows the mark and references the provided services.
When submitting website screenshots as specimens, you need to include the URL and the date when it was accessed or printed.
USPTO Examination Guide 1-20
Remember, though, that the trademark specimens for goods and the specimens for services are not the same. Goods specimens show the mark on the goods, the labeling, or the packaging; services specimens show the mark in the advertising or providing of the services.
Trademark Rights are Based on Use
It is not enough to show how you might use a trademark specimen in the marketplace. You must show the actual thing as consumers encounter it in the marketplace. Therefore, mock-ups and digitally altered trademark specimens are not acceptable.
Even though you can apply to register your trademark before you begin using it, the US Trademark Office won’t register it until you prove use. The way to do it is by submitting a specimen with your Statement of Use.
However, the Puerto Rico Trademark Office may register it, prior to its use. That is if you have a bona fide intent to use a trademark in Puerto Rico. Here’s more information on the Puerto Rico Trademark Registration process.
And, as before, remember that a trademark specimen is not the same thing as a drawing. A drawing shows what the mark is; a specimen shows how the mark is used.
If you receive an office action refusing to register your trademark, we can assist you in answering the office action to overcome the refusal. Contact us by writing a comment or messaging Solid Rep.
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