"Specimen" Refusal and How to Overcome This Refusal
What Is a "Specimen"?
A specimen is a sample of how you actually use your mark with the goods and/or services identified in your application in the commercial marketplace (e.g., on your product packaging or website). It is not the same as the drawing of the mark, which shows only the mark you want to register. So, a specimen is generally what consumers actually see when they are trying to purchase your goods or services.
A specimen for goods (products) usually shows the mark on the actual goods, on labels/tags affixed to the goods, on packaging, or in a product display for the goods (like a window display). Advertising materials are generally not acceptable as a specimen for goods, nor are materials used to carry out your daily business (e.g., invoices, packing slips, etc.).
The USPTO typically accepts the following specimens for goods:
- A photograph of the product showing the mark directly on the product (e.g., the bottom of a coffee mug)
- Product labels and tags showing the mark (e.g., the label on a t-shirt)
- Product packaging showing the mark (e.g., detergent soap packaging)
- Signage used in a product display at a store (e.g., a photograph of the display)
- A webpage showing or describing the product near the mark and with purchasing information (e.g., a webpage showing a photograph of a computer laptop, the mark for the laptop appearing above the photograph, the price appearing below the photograph, and a shopping cart button/link appearing on the page)
- For downloadable software, copies of the instruction manual and screen printouts from (1) web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, (2) the actual program that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program
A specimen for services generally shows the mark used in the sale, rendering, or advertising of the services. A consumer should be able to directly associate your mark with the services you identified in the application on the specimen.
The USPTO typically accepts the following specimens for services:
- Print or Internet advertising
- Brochures and leaflets
- Menus for restaurants
- Business cards and letterhead with a reference to the services
- Marketing materials
- A photograph of business signage and billboards
- A photograph of a musical band performing with the band’s name displayed during the performance (e.g., on the band’s drum)
See TMEP §§904 et seq. and 1301.04 et seq. for more information about acceptable specimens for goods and services.
What is a "Specimen" Refusal?
The USPTO issues a specimen refusal for a variety of reasons, including the following.
- The specimen does not show the applied-for mark
- The specimen does not show use of the applied-for mark with any goods, services, or classes in the application, amendment to allege use, or statement of use
- The specimen is not actually in use in commerce in the marketplace (e.g., a printer’s proof of an advertisement for services)
- The specimen does not show use in commerce by the applicant in the rendering or advertising of the services (e.g., a press release sent exclusively to news media for services)
- The specimen indicates that the goods have not yet been sold or transported in commerce (e.g., pre-sale orders for goods not yet available)
- The specimen is a digitally created or altered image of the goods
- The specimen is merely advertising for goods
- The specimen is merely material used to conduct business for goods (e.g., invoices, packing slips, billheads, business stationery, order forms, waybills, bills of lading, warranties)
- The specimen is merely a picture or rendering or copy of the drawing of the applied-for mark
- The specimen fails to make a direct association between the applied-for mark and an applicant’s services
- The specimen is a webpage that fails to include ordering information, pricing, and/or an association between the applied-for mark and an applicant’s goods
- The specimen is a webpage for downloadable software that fails to create an association between the applied-for mark and an applicant’s goods or fails to provide a means to download or purchase the software
See TMEP §§904, 904.03-904.04, 904.07, 1301.04(a), and 1301.04(g) for more information regarding specimen refusals.
Note that the USPTO will never issue a specimen refusal 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 two possible response options for overcoming this specimen refusal.
You should respond to such a refusal using the Trademark Electronic Application System (TEAS) “Response to Office Action” online form (available at http://teasroa.uspto.gov/roa/) for a nonfinal Office action, which includes any required statement and supporting declaration language referenced in the Office action. You should respond to such a refusal using the TEAS “Request for Reconsideration after Final Action” form (available at http://teas.uspto.gov/office/rfr/) for a final Office action. The instructions provided in both forms are the same.
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application (or prior to the filing of the amendment to allege use, or prior to the expiration of the deadline for filing the statement of use) and (b) 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. In addition, 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, amendment to allege use, or statement of use.
For more information on substitute specimens, see 37 C.F.R. §§2.59(a), 2.71(c) and TMEP §§904.03 et seq., 904.05, 1301.04 et seq.
TEAS online form instructions: To submit a substitute specimen, (1) answer “Yes” to form wizard question #2; and then, do the following for each relevant class for which a substitute specimen is being submitted: (2) under “Classification and Listing of Goods/Services,” select the following statement, “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate. If not checked, the changes will be ignored.”; (3) within the “Classification and Listing of Goods/Services” section, under “Specimen File,” attach a jpg or pdf file of the substitute specimen by using the “Click here to Attach Specimen(s)” button; the size of which specimen may not exceed 5 megabytes per attachment; (4) describe what the specimen consists of; and (5) select the following 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) Amend your filing basis to intent to use under Section 1(b) to overcome the specimen refusal, because a Section 1(b) filing basis does not require a specimen. If you have filed an amendment to allege use (AAU), you may withdraw the AAU; the AAU fee will not be refunded. If you have filed a statement of use (SOU) after a notice of allowance issued, you may not amend to an intent-to-use basis; an SOU may not be withdrawn.
Note: If you amend to an intent-to-use basis or withdraw the AAU, registration will 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 an 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; and TMEP §§806.03(c), 1103.
TEAS online form instructions: To amend to Section 1(b), (1) answer “Yes” to form wizard question #2; and then, do the following for each relevant class for which the basis is being amended: (2) under “Classification and Listing of Goods/Services,” select the following statement: “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate. If not checked, the changes will be ignored.”; (3) within the “Classification and Listing of Goods/Services” section, under “Filing Basis Section 1(a),” uncheck the box for “Filing Basis Section 1(a)”and delete the information appearing in the Date of First Use of Mark Anywhere and Date of First Use of Mark in Commerce textboxes; and (4) check the box for “Filing Basis Section 1(b).”
TEAS online form instructions: To withdraw an AAU, answer “Yes” to form wizard question #3. In the “Additional Statement(s)” section, check the box for “Miscellaneous Statement,” and enter in the text field for the “miscellaneous statement” that “Applicant withdraws the amendment to allege use.” For technical assistance, contact TEAS@uspto.gov.