Mark on the Specimen Does Not Agree with Mark on the Drawing - Not a Material Difference
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.
Your specimen will be refused if it does not show the same mark that appears in the drawing - the mark on the specimen and the drawing must match. If the two marks do not match, you may amend the mark in the drawing to agree with the mark on the specimen only if the differences between the two marks are minor or insignificant, such that making the changes would not materially alter the mark in the original drawing. In such case, you may amend the mark in the drawing only to the extent necessary to cause it to match the mark on the specimen. Additional amendments to the mark will not be permitted if the changes create a mark with a different commercial impression than the mark in the original drawing; that is, if they result in a material alteration of the mark as originally filed.
See 37 C.F.R. §§2.51(a), 2.72(a)(2) and TMEP §§807, 807.12(a), 807.14 et seq. for more information regarding the requirement for an agreement between the mark on the specimen and the drawing, and what constitutes a material difference.
How Can I Overcome This Refusal?
You may overcome this refusal by satisfying one of the two response options below.
Responding Online Using the Trademark Electronic Application System (TEAS): Below are instructions for how to use TEAS to respond to this 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 a new drawing that shows the mark appearing on the specimen, and makes no other changes that would materially alter the mark as originally filed. For marks that include a design or logo and/or a particular font or lettering style (also called a "special form drawing"), you may also need to provide a revised mark description and/or color claim to agree with the mark on the new drawing.
A description of your mark is required for all special form drawings. A mark description must describe your entire mark - all wording and any other literal and/or design elements in the mark. If your mark is in color, you will also need to submit a claim that identifies all the colors in the mark and include in the mark description the location of those colors. If you mark appears in or includes black, white, and/or gray and you do not want to claim those colors as part of your mark, you must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise.
TEAS online form instructions: To submit a new drawing, answer "Yes" to form wizard question #4. In the "Mark Information" section of the form, check the box stating that you have read and understood that a material alteration will not be permitted. To amend a standard character mark, write in the new mark in the free form text field for modifying the standard character mark. To amend a special form mark, click on the "Browse" button to select a JPG image file from your local drive. The image size cannot exceed 5 megabytes. Click the "Open" file button. After the file name appears in the window, click on the "Attach" button to upload the file into the application. A "thumbnail" version of the image will then display directly within the form. If appropriate, enter a revised description of the mark in the mark description field. If appropriate, enter each color appearing in the mark in the field for claiming color.
(2) Submit a different verified 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 mark on the drawing 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.
Note about dates of use: You may need to amend the dates of use if, based on the substitute specimen, the mark was in use in commerce on different dates than those in the application, amendment to allege use, or statement of use.
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
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*
- Marketing and promotional 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)
*Specimens consisting of advertising, marketing, and/or promotional materials must show a direct association between the mark and the services. However, if your mark itself references the services, the specimen would show a sufficient direct association (e.g., ABC MEDICAL for a medical clinic).
See TMEP §§904 et seq. and 1301.04 et seq. for more information about acceptable specimens for goods and 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.
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.