Mark on the Specimen Does Not Agree with Mark on the Drawing - Colors Do Not Match - 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, including color. If the color in the two marks does not match and the differences in these colors are material or significant, your only option is to submit a different specimen showing the mark in the colors shown on the drawing or to amend the basis to Section 1(b) (or withdraw the amendment to allege use). You may not submit a new color drawing (or a black-and-white only drawing with the color omitted) because amending the mark shown on the drawing to match the mark shown on the specimen would create a materially different mark, that is, a mark with a different commercial impression from the mark on the original drawing, and thus deny the public proper notice of the mark.
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 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 a different verified specimen (a "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 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.
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.
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.
(2) 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 will 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. If you submit the same specimen, the trademark examining attorney will likely issue the same refusal again.
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 of 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."