"Specimen" Refusal and How to Overcome This Refusal
What Is a "Specimen" Refusal?
The USPTO issues a specimen refusal when your sample of how you use your applied-for mark (the “specimen”) is not an acceptable type of specimen (such as advertising for goods) or it does not actually show the mark in use in commerce for your particular goods or services or a specific international class of goods or services identified in the application, amendment to allege use, or statement of use. Note that this refusal never issues for applications filed under Section 44 or 66(a) of the Trademark Act, because those applications do not require specimens.
How Can I Overcome This Refusal?
Below are the two possible response options for overcoming a specimen refusal.
NOTE: You should respond using the Trademark Electronic Application System (TEAS) “Response to Office action” (ROA) form (available at http://teasroa.uspto.gov/roa/), which automatically provides any required statement and supporting declaration language referenced in the Office action.
(1) Submitting a different specimen (a verified “substitute” specimen) that was in actual use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use, or prior to the expiration of the deadline for filing a statement of use) and that shows proper trademark or service mark use of the same mark for each international class identified in the application, amendment to allege use, or statement of use.
NOTE: You may need to amend the dates of use if the substitute specimen was in use in commerce on different dates than those in the application or amendment to allege use/statement of use.
Examples of specimens normally acceptable for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages are also acceptable specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
Examples of specimens normally acceptable for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. For more information on substitute specimens, see 37 C.F.R. §§2.59(a), 2.71(c); TMEP §§904.03 et seq., 904.05, 1301.04 et seq.
TEAS ROA form instructions: Answer “Yes” to form wizard question #2. In the “Classification and Listing of Goods/Services” section, scroll down to “Specimen File” and use the “Click here to Attach Specimen(s)” button to upload the JPG/PDF image file of the specimen. The size cannot exceed 5 megabytes per attachment. Enter the description of the specimen and check the box related to this statement: "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application" [for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. For technical assistance, contact TEAS@uspto.gov.
(2) Amending your filing basis to intent to use under Section 1(b) to overcome the specimen refusal, because this refusal is based solely on the specimen of record. If you have filed an amendment to allege use (AAU), you may withdraw the AAU; the AAU fee will not be refunded. You may not, however, amend to an intent-to-use basis if you have filed a statement of use (SOU) after a notice of allowance issues; an SOU may not be withdrawn.
NOTE: If you amend to an intent-to-use basis or withdraw the AAU, registration may not be granted until you amend the application back to use in commerce under Section 1(a) by filing an acceptable allegation of use (another AAU or SOU) with (1) a specimen showing proper use in commerce and (2) the required fee. If you submit the same specimen, the trademark examining attorney will issue the same refusal again.
For more information on amending the basis, see 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §§806.03(c), 1103.
TEAS ROA form instructions: Answer “Yes” to form wizard question #2. In the “Classification and Listing of Goods/Services” section, uncheck the box for “Filing Basis Section 1(a), Use in Commerce” and check the box for “Filing Basis Section 1(b), Intent to Use.” For technical assistance, contact TEAS@uspto.gov.