"Specimen" Refusal & How to Overcome This Refusal

 

Specimen Is Not Acceptable as a Point-of-sale Display

Printed brochures and other advertising or promotional material are generally not acceptable specimens as point-of-sale displays. Typical point-of-sale display materials include banners, signs, posters, and shelf-talkers, which are used in table, counter, or window displays. For advertising or promotional materials to be acceptable as a point-of-sale display, you would need to provide additional evidence showing such material used together with the goods at their actual point of sale, such as a photograph showing the specimen used with the goods in a product display, or a verified statement explaining how the specimen is actually used at the point of sale and how your mark is specifically associated with the goods. Merely stating that the advertising and promotional materials are used in connection with sales presentations is generally not sufficient evidence of use as a display. If sufficient additional evidence is not provided, the USPTO will issue a specimen refusal.

See In re Ancha Elecs., Inc., 1 USPQ2d 1318, 1319-20 (TTAB 1986) and TMEP §§904.03(g), 904.07(a) for more information regarding point-of-sale displays.

 

How Can I Overcome This Refusal?

Below are three possible response options for overcoming this specimen refusal.

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.

(1) Submit evidence that the specimen was used with the goods at their point of sale, such as (a) a photograph of the specimen used with the goods as a point-of-sale display; or (b) a verified statement explaining how the specimen is actually used at the point of sale and how your mark is specifically associated with the goods.

See TMEP §904.03(g) for more information regarding this response option.

TEAS online form instructions:

To submit a photograph, answer "Yes" to form wizard question #1. Then, after proceeding through the form, in the "Evidence" section, use the "Click here to Attach Evidence(s)" button to upload the evidence (each attachment cannot exceed 5 megabytes). Enter a description of the evidence in the text box below where you attached the evidence.

To submit a verified statement, answer "Yes" to form wizard questions #3 and #10. Then, continuing on to the next page in the form, in the "Additional Statement(s)" section, check the box for "Miscellaneous Statement." In the free form text field for the "Miscellaneous Statement," enter a statement explaining how the specimen is actually used at the point of sale and how the mark is specifically associated with the goods. Then click the "Continue" button at the bottom of the form. In the "Signature" section, personally sign both the Declaration Signature and Response Signature. 

(2) 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 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.

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.

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 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

See TMEP §§904 et seq. for more information about acceptable specimens for goods. 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.

TEAS online form instructions:

To submit a substitute 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 substitute 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.

(3) 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 may not be granted until you amend the application to claim use in commerce 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, currently $100 per class. If you submit the same specimen, the trademark examining attorney will likely issue the same refusal again.

See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; and TMEP §§806.03(c), 1103 for more information on amending the basis.

TEAS online form instructions:

To amend to Section 1(b), (1) answer "Yes" to form wizard question #2; and then, continuing on to the next page in the form, under the heading "Classification and Listing of Goods/Services/Collective Membership Organization," do the following for each relevant class for which the basis is being amended: (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 "Filing Basis Section 1(a)," uncheck the box for "Filing Basis Section 1(a)"and delete any information appearing in the Date of First Use of Mark Anywhere and Date of First Use of Mark in Commerce text boxes; and (4) check the box next to "Filing Basis Section 1(b)."

WARNING:  When amending to Section 1(b), 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 amendment being unverified and unacceptable.

TEAS online form instructions: To withdraw an AAU, answer "Yes" to form wizard question #3. Continuing on to the next page in the form, 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."