IP Tech Knowledgy

In a trademark application, be sure the examples you file to show usage fit the appropriate guidelines, and maybe even utilize newer provisions geared toward selling products online. To gain trademark registration at the US Patent and Trademark Office, an applicant must file specimens of use to demonstrate it is using the mark as the branding for the applied-for goods and services. 

There are slightly different requirements that apply to goods or services. For goods, the specimen must show that the mark is “affixed to the goods.” This generally means a label is on the item itself, on a hangtag, or on packaging. The trademark shown in a display where the products are sold is also sufficient. If tangible products are sold online, a relatively new rule is that the page from the online store where a consumer can purchase the item is deemed similar to a store display and is acceptable, so long as the consumer sees the mark and the product, and also has the ability to purchase from that page. Advertising is not a valid specimen for a tangible product.  The rules for services are more liberal. An advertisement for the service is an acceptable specimen, as is showing signage, materials provided with the service, or a brochure or online description of the service.  

Any specimen of use must show how the consumer sees the mark associated with the goods or services offered. Generally, photographs or screenshots are acceptable specimens. A series of screenshots, so long as they clearly flow from where the mark is used to where the goods and services are offered, also should work.  

When submitting screenshots, each image must show the full URL of the page visited, along with the date and year the screenshot was taken.  

When applying for a logo, be sure the logo in the specimen of use exactly matches the image shown in the drawing of the logo you submit.

Specimens must show current actual use and cannot be a mere word that happens to be on the page.  They also cannot be a mock-up created just for the application. If you think certain aspects in the specimen need to stand out, so the examining attorney understands what use you are demonstrating, you can highlight or circle those aspects without nullifying the specimen.

Under the USPTO procedures, all possible goods and services are divided into one of 45 different classes.  Although the rule is that an applicant needs to provide only one specimen for each applied-for class, if an application includes a diverse listing in any class, it is prudent to submit multiple specimens for that class to demonstrate the diversity.  This will help deter the examiner, or possible third-party opposers from asserting that the applicant is not using all of the items claimed.

Specimens are required with the initial filing if the application is based on use and can be filed later as part of the Intent-to-Use application.  Applications based on foreign registrations do not require specimens.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com