Everything You Always Wanted To Know About Trademark Specimens*

Many applicants for federal trademark registrations have problems understanding and meeting the standards for specimens required by the U.S. Trademark Office. These difficulties are not surprising given the rules and rigid enforcement of them by the Trademark Examiners. Here are the basic ideas behind the specimens.

Use. The point of the specimen requirement is to prove use of the mark. The mark submitted with every application shows the Examiner the appearance of the mark, whether it is words or graphics or a combination. The specimen goes further and shows the Examiner how the mark is actually seen by the public. Think of the difference between the word COCA-COLA and a bottle of Coke. The word is the mark; the bottle is the specimen showing use of the mark.

Goods. The specimen for a goods registration must be a label, tag, or package containing the goods or a display associated with the goods. Advertising is almost always rejected as a goods specimen. Proofs or bare digital files of a mark are rejected on the basis that they do not show the mark as it is used by the applicant and viewed by the consumer of the goods. A display is most likely to be accepted if it is used at the point of sale.

Services. The requirements for specimens of service marks are different and trickier. A service mark specimen may show the mark as used in advertising the services recited in the application. However, printer’s proofs and drafts of advertisements will be rejected. The minimum requirement for a trademark use in advertising of services is a direct connection between the mark and the offer of services. A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage and will fail to meet the standard.

Number of Specimens. A specimen is required for each class in the application. For example, in an application for PALCARE for dog food (Class 31) and veterinary services (Class 44), the Examiner would be likely to look for a photo of the dog food bag labeled with the mark (Class 31) and a different specimen, such as the clinic brochure from the rack in the waiting room, for the service class. To pass, the brochure would have to show the mark and contain information about the services, clinic policies, prices, etc., and be available to the consumer at the time of purchase of the services.

*Well, not everything, so, as the disclaimer says, be sure to consult with trademark counsel before choosing specimens for an application.

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