If your application is based on use in commerce and the required specimen was omitted from the application, you may submit a verified specimen that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows proper trademark or service mark use of the same mark for each international class identified in the application. In addition, you may need to amend the dates of use if the specimen was in use in commerce on different dates than those in the application.
A “verified specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “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.” The USPTO will not accept your specimen without this statement. If you follow the TEAS online form instructions below, this statement will be included in the form and the declaration supporting it will automatically be added in the “Declaration Signature” section above where you will sign the response form. In effect, the TEAS online form requires two signatures - one in the “Declaration Signature” section and one in the “Response Signature” section.
Note about dates of use: You may need to amend the dates of use if, based on the specimen, the mark was in use in commerce on different dates than those in the application.
Responding Online Using the Trademark Electronic Application System (TEAS): Below are instructions for how to use TEAS to respond to such issue in an Office action. The instructions below presume that you will be using a TEAS form to respond online to more than one issue. To respond using TEAS, you must fill out the form to address all issues in the Office action and, at the end of the form, the correct party must properly sign it. For more information about who may sign a response, please review your Office action.
To respond to this issue in a nonfinal Office action, use the TEAS "Response to Office Action" (ROA) online form. To respond to this issue in a final Office action, use the TEAS "Request for Reconsideration after Final Action" form. These forms will include the appropriate required statements and supporting declaration language referenced in the Office action. The instructions provided in both forms are the same. For technical assistance with these forms, contact TEAS@uspto.gov.
TEAS online form instructions: To submit a specimen, (1) answer "Yes" to form wizard question #2; and then, continuing on to the next portion of the form, under the heading "Classification and Listing of Goods/Services/Collective Membership Organization," do the following for each relevant class for which a specimen is being submitted: (2) check the box next to 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."; (3) under "Specimen File," attach a specimen (attachment may not exceed 5 megabytes); (4) describe in the box below where you attached the file what the specimen consists of; and (5) check the box next to the following statement below the specimen description (to ensure that the declaration language is inserted into the form): "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].
WARNING: When submitting a verified substitute specimen (or any verified statement), the TEAS online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section. The declaration in the TEAS online form should not be bypassed, doing so will likely result in the refusal of your specimen.