"Specimen" Refusal and How to Overcome This Refusal

What is a Specimen?
When does the USPTO issue a specimen refusal?
Overcoming a specimen refusal 


What Is a "Specimen"?

A specimen is a real-life sample of how you are actually using your mark with the goods and/or services identified in your application in the marketplace (e.g., on your product packaging or website). It is not the same as the drawing of the mark, which is the part of the application that shows only the mark you want the USPTO to register. So, a specimen is generally what consumers actually see when they are purchasing your goods or services.

Remember, it is not enough to show how you might use or plan to use the mark in the marketplace; for example, a label must be the physical label that is being used on the product or packaging in the marketplace where the goods are actually being sold or transported. Digitally altered specimens, or otherwise mock-ups, are not acceptable. 


When does the USPTO issue a specimen refusal?

The USPTO issues a specimen refusal when you have not included a specimen in your application or if your specimen does not show how you are actually using your mark in the marketplace, such as when the specimen:

  • does not show the applied-for mark clearly or is otherwise illegible
  • does not show the applied-for mark at all
  • does not show use of the applied-for mark with any goods, services or classes in the application, amendment to allege use (AAU) or statement of use (SOU)
  • is not actually in use in commerce in the marketplace (e.g., a printer's proof of an advertisement for services, press releases, digitally altered image or mock-up of the goods or packaging)
  • 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)
  • indicates that the goods have not yet been sold or transported in commerce (e.g., pre-sale orders for goods not yet available)
  • is merely advertising for goods
  • is merely material used to conduct business for goods (e.g., invoices, packing slips, billheads, business stationery, order forms, waybills, bills of lading, warranties)
  • is merely a picture or rendering or copy of the drawing of the applied-for mark
  • fails to make a direct association between the applied-for mark and an applicant's services
  • is a webpage that fails to include ordering information, pricing and/or an association between the applied-for mark and an applicant's goods
  • 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
  • was not verified
  • is not acceptable as a point-of-sale display

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.


Overcoming a specimen refusal

How do I choose the best response option for my application?

There are four possible options for overcoming a specimen refusal. Click the link for further information and instructions for responding through our Trademark Electronic Application System (TEAS). As noted below, some options may not be available for your specific application. You may, if applicable:

  1. Submit a verified specimen or verified substitute specimen – available to any applicant who has not submitted a specimen or whose specimen has been refused for any reason.  Submit a specimen or substitute specimen that demonstrates proper use of your mark in commerce for your goods and/or services
  2. Amend your filing basis to intent to use under Section 1(b) – available to any applicant who has not submitted a specimen or whose specimen has been refused for any reason, provided the applicant has not submitted an SOU.
    Change your filing basis to “intent to use” and provide a proper specimen later in the application process. 

**The following options in 3-5 are appropriate only for certain specific situations.**

  1. Submit a proper verification of your specimen/substitute specimen – this option should only be used if a previously submitted specimen/substitute specimen, which is otherwise acceptable, was not verified.
    Submit a verified statement that your specimen/substitute specimen is in use in commerce and was in use in commerce on or before the appropriate deadline based on your application, AAU or SOU.
  2. Submit evidence that the specimen was used with your goods at their point-of-sale – this option should only be used if your specimen was refused because it is print advertising material identified as a display for your goods. 
    Submit evidence that the print advertising material was used with your goods at their point-of-sale, such as a photo showing the print advertisement used with your goods as a display associated with the goods or a verified statement explaining how the specimen is actually used at the point of sale and how applicant’s mark is associated with the goods.
  3. Submit a true, unaltered copy of the originally submitted specimen – this option should only be used if your specimen was refused because it did not clearly show your applied-for mark (e.g., was altered, mutilated, or illegible). 
    Submit a true, unaltered copy of the originally submitted specimen that is clear and readable with a statement from the person who submitted it that it is a true copy of what was originally submitted.

How do I review my Office action and submit my response?

Your Office action identifies one or more issues with your application, all of which must be addressed. It also includes information on who is authorized to sign your response. Make sure the correct party signs your response:

  • If you have an attorney, the attorney must sign the response.
  • If you do not have an attorney, and you are an individual applicant, then you must sign (and date) the response yourself. 
  • If you are a juristic applicant (e.g., corporation, partnership), then someone with legal authority to bind the juristic applicant must sign (e.g., a corporate officer or general partner) and date the response. 
  • In the case of joint applicants, all joint applicants must sign the response.

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

NOTE: When submitting any signed document to the USPTO, the person filing the submission is certifying that the allegations and other factual contentions in that document have evidentiary support.


What are the next steps?

Processing time varies depending on your application and which option you choose to try to overcome the refusal, so continue to check TSDR regularly to monitor your application’s status. Any additional Office actions that are issued will be posted in TSDR and sent to you based on your contact preferences.

QUESTIONS?  For general information and assistance regarding the registration process and the status of your application, please contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For specific questions about your Office action, please contact directly the examining attorney listed in your Office action.