How to Submit a Different Specimen (a Verified "Substitute" Specimen)

•    Requirements for a verified specimen or verified substitute specimen 
•    Examples of acceptable/unacceptable specimens for goods 
•    Examples of acceptable/unacceptable specimens for services 
•    TEAS instructions for submitting a verified specimen or verified substitute specimen

 

Requirements for a verified specimen or verified substitute specimen

To overcome a specimen refusal or an ornamental refusal, you may submit a specimen (if one was not initially submitted) or a different specimen that meets the requirements listed below.

(1)    Specimen must have been in actual use in commerce by the applicable deadline:

  • For an application: at least as early as the filing date
  • For an amendment to allege use (AAU): prior to the filing date
  • For an statement of use (SOU): prior to the expiration of the deadline for filing.

(2)    Specimen must show proper (non-ornamental) trademark use in commerce for the goods, services or classes identified in your application, AAU or SOU.
(3)    (For services only) Consumer must be able to directly associate your mark with your services.

 

Examples of acceptable/unacceptable specimens for goods


The USPTO typically accepts the following as 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. Alternatively, 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
 

The USPTO typically does not accept the following as specimens for goods:

  • Advertising materials
  • Press releases
  • Materials used to carry out your daily business (e.g., invoices, packing slips, etc.)
  • Digitally-altered or mock-up images of the goods or packaging
  • Drawings/renderings of the mark
 

Examples of acceptable/unacceptable specimens for services


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)
  • Title or launch screens displayed on a smartphone or computer for video games or ongoing television programs

*For specimens consisting of advertising materials, keep in mind that there must be a direct association of the mark to the service by the consumer.

The USPTO typically does not accept the following as specimens for services:

  • Press releases
  • Printer’s proofs of advertising
  • Digitally-altered or mock-up images of signage on the front of a business or of advertising
  • Drawings/renderings of the mark

Note about dates of use: If your substitute specimen was used in commerce on different dates from the refused specimen, update the dates of use in your application, AAU and/or SOU to reflect the correct dates of use for your substitute specimen.

See TMEP §§904 et seq. and 1301.04 et seq. for more information about acceptable specimens for goods.  For more information about substitute specimens in general, see 37 C.F.R. §§2.59(a), 2.71(c) and TMEP §§904.03 et seq., 904.05, 1301.04 et seq.

 

TEAS instructions for submitting a verified specimen or verified substitute specimen:

To respond to in a nonfinal Office action, use the "Response to Office Action" (ROA) online form.  To respond to a final Office action, use the "Request for Reconsideration after Final Action" online form.  The instructions provided in both forms are the same. If you need technical assistance with TEAS, contact TEAS@uspto.gov.

NOTE:  The TEAS online form requires two signatures for substitute specimens - one in the “Declaration Signature” section and one in the “Response Signature” section.  The same individual may not always have the authority to sign in both places.

Once you have opened the appropriate TEAS form:

(1)    Answer "Yes" to form wizard question #2.
(2)    Continue on to the next portion of the form and complete steps 3-6 listed below for each relevant class for which a specimen or substitute specimen is being submitted.
(3)    Under "Classification and Listing of Goods/Services/Collective Membership Organization," select the following statement, “Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration. If not checked, the changes will be ignored.”
(4)    Within the "Classification and Listing of Goods/Services/Collective Membership Organization" section, under "Specimen File," attach a jpg or pdf file of the specimen or substitute specimen by using the "Click here to Attach Specimen(s)" button. The size of your attachment may not exceed 5 megabytes per file.
(5)    Describe what the specimen consists of.
(6)    Select the following statement:
"The substitute (or new, or originally submitted, 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, or originally submitted, 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]
(7)    Once all relevant classes have been addressed, click the “Submit” button.

For more information about acceptable specimens for goods and/or services, see TMEP §§904 et seq. (goods) and 1301.04 et seq. (services). 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.