The U.S. Trademark Office has recently increased scrutiny on specimens and on claims of use in commerce. This is likely in response to a proliferation of fraudulent use claims and of “fake” specimens that some unscrupulous applicants create strictly to prove use of a trademark. To protect the accuracy and the integrity of the trademark register, the Trademark Office has started conducting a more discerning review of all specimens. This review occurs both during the trademark registration process and in response to maintenance submissions. Thus, it is important to be extra vigilant when submitting proof of use to the Trademark Office.
What Are Acceptable Specimens of Use?
Acceptable specimens of use for goods
Specimens for goods must either show the mark on the goods themselves, or on product packaging, product labels, product hang tags (typically used for apparel), or product displays. For labels and hang tags to be acceptable, they must be attached to the goods.
The Trademark Office also accepts websites to show use for goods, but these must include the trademark along with either an image or a clear description of the product, as well as an “add to cart button.” Without the “add to cart button” (or a clear way to order the product), the specimen will not be acceptable.
Acceptable specimens of use for services
Specimens of use for services are usually websites, but can also take the form of promotional materials such as brochures, advertisements, billboards, signage at the location the services are rendered, menus (for restaurants), or letterheads and business cards.
Generally, to be acceptable, a specimen for services must show the mark along with a clear description of the services.
Digitally altered images, mockups, printer’s proofs, drawings and illustrations, and press releases are not acceptable to show use of goods or services.
Cautionary Tale #1: Office Action Requirement for Representative Specimens
After filing a trademark application based on use in commerce, the manufacturer of a variety of houseware products that are classified within a wide range of classes received an Office Action with a requirement for the submission of representative specimens.
The Representative Specimen Requirement is triggered when the list of goods and services is so comprehensive that it encompasses a wide range of goods and services. When the Requirement is triggered, the applicant must then submit evidence that it actually uses the mark on a wide range of goods and services to obtain the registration.
Usually, a trademark application only requires one specimen per class. The Representative Specimen Requirement may be raised despite submitting acceptable specimens for each class at the outset of filing. In effect, the Representative Specimen requirement is a way for the USPTO to ascertain that all of the goods and/or services listed are in fact in use.
In the Office Action, the Examiner divided each class into several subgroups of related goods within the class. The Examiner required that a representative specimen be submitted for each sub-group. From 5 classes, the Examiner created a total of 19 separate groups of goods and requested 19 additional representative specimens, one for each of these groups. A declaration was also required to support the assertion that these specimens were in use prior to the filing of the application.
It is important to note that in this case, the list of goods in the application was based on the applicant’s catalog. This made it easier to meet the Representative Specimen Requirement, since the list of goods in use was in fact accurate.
Moral of the Story: Be prepared to provide proof of use of any of the goods or services in the application, even when the application is based on use in commerce.
Cautionary Tale #2: Office Action After Statement of Use Submission
After submission of a carefully selected and seemingly acceptable specimen of use with a Statement of Use, an Office Action was issued in response. The Examiner deemed the specimen unacceptable as being a digitally altered image and/or mock up. In fact, the image was authentic, but due to issues with the quality of the image, there was some pixelation that made it appear as though the mark was later added to the goods through image editing software. Even after the Examiner was provided with an explanation and assurances that the image was authentic (albeit of low quality), the Examiner explained that the mere fact that there was pixelation on the image meant that it would not be acceptable.
This type of refusal can usually be remedied with a fresh specimen and a declaration stating that the specimen was in use prior to the submission of the Statement of Use. However, the Trademark Office has increased the stakes and the burden with a newer requirement for additional information in addition to a new specimen that was in use at the time of the submission of the Statement of Use.
Under the rules, the following 6 in depth inquiries, with sub-inquiries, must also be satisfied:
(1) Identify the particular good(s) listed in the application for which the specimen(s) was submitted to show use of the mark.
(2) Was the specimen created for submission with this application? If so, specify the date each specimen was created. If applicant obtained the image(s) of the goods shown in the specimen(s) from a third-party website, provide the URL of the website and a digital copy of relevant webpage(s) for each image.
(3) Provide information about and examples of how applicant’s goods appear in the actual sales environment.
(a) If sold in stores, provide a representative sample of the name(s) of the stores and of photographs showing the goods for sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark.
(b) If sold online, provide a representative sample of the name(s) of the online retailers, the website URL(s) for each named retailer, and a digital copy of the webpages showing the goods for sale on the named website.
(c) If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs and/or documentation showing the goods for sale in that environment.
(4) If the information in question (3) about how the goods appear in the actual sales environment is not available to applicant, please describe how applicant’s goods are sold or transported and provide photographs and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are sold or transported to or within the United States.
(5) For each category of sales environment specified in response to questions (3) and (4), specify when the goods bearing the mark were first available for purchase within the United States, the date of the first sale of the goods to or within the United States, and whether the goods are still for sale to or within the United States in that environment.
(6) For the goods identified in response to question (1), specify the dollar amount of sales with or within the United States and provide at least three invoices or other supporting documentation that show payments or other consideration made, redacting personal or private information of buyers as necessary.
Failure to submit a better specimen AND respond to these additional inquiries will result in a refusal of the registration.
Moral of the Story: Image quality is an important consideration in the selection of appropriate specimens of use.
Cautionary Tale #3: Random Audits After Maintenance Filing
The renewal of a trademark was timely filed. The trademark itself was relatively simple, covering 1 class, with only seven listed goods. The specimen used to renew the trademark was acceptable to show use on 3 of these 7 goods. Even so, the Trademark Office issued an Office Action, acknowledging the acceptability of the specimen, and noting that the registration was selected for a random audit. The Examiner requested proof of use for 2 of the remaining 4 goods that were not the subject of the specimen.
Moral of the Story: Delete any goods at the time of renewal that are not in use in the U.S. This action can help to simplify responding to an audit.
To avoid refusals due to unacceptable specimens, it is important to observe the following best practices:
- Specimens should be in line with the above guidelines for goods and services.
- Specimens should show the mark clearly on the goods, with no pixelations, blurring, shadows, or other flaws. Similarly, specimens should not be computer generated mockups or fake in any way.
- It is important to carefully review each good and service of the application/registration and to delete any goods or services that cannot be supported with use in commerce.