Clients seeking to register a trademark by filing a trademark application with the USPTO will eventually need to file a specimen. There are many potential pitfalls when filing a specimen with the USPTO. While these pitfalls are often not fatal to your trademark filing, they do add more time and cost to your filing. Your trademark is important to your overall marketing strategy. You do not want to start developing and selling your product and then find that you need to re-design your product because of a trademark issue.
To provide a Frequently Asked Questions (FAQ) about trademark specimens, we will present questions that a potential customer might ask before applying for a hypothetical trademark registration called MYMARK. Unfortunately, the answers aren't always a simple yes/no answer. This is why it is important to have a U.S. licensed attorney who specializes in trademark law to help guide you throughout the application process. An attorney that is experienced in trademark law, that understands how to apply for trademarks, register your trademarks and maintain your trademark registrations. In our office in St. Clair Shores, Michigan, we can provide trademark registration services, trademark search strategies, trademark application assistance, trademark filing guidance, trademark legal advice and assistance with trademark forms, along with other intellectual property legal services.
Q: Preparing a specimen seems difficult. Do I need to provide a specimen?
Q: I don't even have a product yet, how am I supposed to give you a specimen?
A: There are two types of applications available when applying for a trademark registration. One is use in commerce (current use) and the other is intent-to-use (there are also additional options if, for example, you already have a foreign trademark registered). If you do not have a product yet, then we can file an application on an intent-to-use basis and provide a specimen later. It is okay to file an application for a trademark registration when you do not have a product yet. But you will eventually need to provide a specimen.
Q: What is use in commerce?
A: Use in commerce means that you are currently using your mark. But the 'in commerce' part is important. For your mark to be used 'in commerce' you need to be able to show that your mark is used in connection with the sale or transportation of goods in two or more states or in providing services to customers who live in two or more states (e.g., providing goods and services across state boundaries).
Q: But what if I only sell my product locally?
A: If you are not selling your product (or services) in two or more states (e.g., interstate commerce), then applying for a federal trademark registration is not for you.
Q: Can I just ship a product to my friend who lives in another state one time and show that I sell across state boundaries?
A: No. That would not be a bona fide use. If you are not actually using your mark out of state, there are other options we can discuss.
Q: Can I file the same specimen if I'm applying for a Word mark and a Design mark?
A: Sometimes. This can be a common pitfall. When you apply for a design mark, your specimen needs to show the design that is in your trademark application. Your specimen can be rejected if the logo on your product is different than the logo in your design mark. There is some flexibility, but it is important that the design mark is accurately represented on the specimen to avoid rejection. With a word mark, you need to show the words on your specimen, and not just a design. For example, for 'Nike' as a word mark, a specimen with the famous Nike Swoosh would not work with just the Swoosh symbol, you need the word Nike. If the logo you applied for with your design mark has the word MYMARK on it, then you could use the same specimen for the design mark and the word mark.
Q: I've already been selling my product. Is the product I've been selling good enough for a specimen?
A: Ideally yes. But not always. What the USPTO considers "using" a product in association with a mark is often different than what people might ordinarily think of as using a mark. We'd have to look at how you're using your mark and how it compares to the mark that you want to register.
Q: I have WWW.MYMARK.COM written on the side of my product, is that good enough for a specimen?
A: No. A website URL on the side of your box functions as a trade name that identifies your business. A trademark is meant to identify the source of the goods and distinguish the goods from others. While you can have your trademark also be your trade name, but then you have to show that you are using it as a trademark. Whether a trade name also functions as a trademark is based on the manner in which the applied-for mark is used on the specimen and the probable impact on the purchaser. You want to have your mark shown prominently on the front of the package. For more information about trademark registration and business names, please see our other article:
How do I protect my Business Name?
Q: I have MYMARK in my company address written on the side of my product, is that good enough?
A: No. For the same reason as the URL question above. If you just have MYMARK in small font near an address on the side of the package then it will be considered a trade name.
Q: Can I include something like "Inc." or "LLC" on my specimen?
A: It will likely be rejected. Again, when you have “LLC” or “Inc.” that indicates a trade name.
Q: I have MYMARK on an invoice. Can I use the invoice?
A: No. Package inserts such as invoices and bills of lading are generally not acceptable to show use on goods. One way to think about this problem is that an invoice is given to the customer after they buy the product. Same with a package insert that comes inside the box. The customer doesn't see it before they buy the product. So an invoice or a package insert would not help the customer know the source of the goods while they were buying the product. Sometimes a packing slip or a bill of lading can be used as a specimen. For example, if your shipment displays your mark prominently on the outside then it could be an acceptable specimen. In such a scenario it would be useful to have a photo of the shipment/bill of lading showing the mark.
Q: My product is too small to include MYMARK on it. What can I do?
A: You can provide a specimen that includes the package or a tag used when you sell your product. For example, if you are selling screws, the package of screws can have MYMARK on it. But we cannot just submit a picture of the empty bag. We need to show the bag with your product in it and MYMARK on the package. Other examples for an acceptable specimen can be: (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark, or (3) a point-of-sale display showing the mark directly associated with the goods.
Q: I have my product on a webpage, is that good enough?
A: Not every webpage is good enough. A webpage that only shows your product is not good enough. You need to be able to show that you can add the item to a cart and actually buy the product. It is best to have a webpage that has a 'buy' button or an 'add to cart' button. You can also show that the website includes instructions for ordering the goods.
Q: I have 'Since 1988' in the logo on my product, is this a problem?
A: For a design mark, including something like "Since" or "EST" with a year can be a problem. If your design mark does not include the year, then the specimen can be rejected. For a word mark, it should be okay.
Q: If I'm selling clothing, can I put my mark anywhere on the article of clothing?
A: You have to be careful because sometimes the USPTO will reject the specimen and consider the mark to be decorative or ornamental. It is best to have your mark displayed relatively small. For a shirt, a good place is near the breast (near your heart), on the collar, inside on the shirt tag (or where a tag usually is, if the shirt is tagless), or on the back near the nape of the neck. Take a good look at the famous Polo logo on a Ralph Lauren shirt, or the Nike swoosh on a Nike shirt and you'll notice that there is usually a small logo on the shirt that is distinct from the design of the shirt. Examples of ornamental use of a mark that will likely be rejected include a quote or logo prominently displayed across the front of a t-shirt, a logo on the front of a hat, or a design that is prominently featured in the center of a shirt or hat. On the other hand, a non-ornamental trademark use that will likely be acceptable includes tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.
Q: But my mark is really cool looking and I spent a lot of time designing it. How come I can't show it off?
A: The key thing to remember is that the purpose of a trademark is to identify the source of the goods. A trademark isn't really meant to allow you to monopolize a slick design or a clever saying. It all comes down to the impression the mark will make on a purchaser. Generally, a small, neat, discrete wording or design can help avoid an ornamental use refusal. Whether a mark is considered ornamental can be tricky and there are no hard rules. The location, size, and dominance of a trademark have a big impact on how the USPTO will determine that the public is likely to perceive the mark.
Q: You've mostly been describing a specimen for a product. What about a specimen for a service? I don't have a product to show for a service.
A: Service marks can be easier to provide a specimen. You can show online marketing, such as a screenshot of MYMARK on a website, a screenshot of posts on a social media account, or screenshots of other online advertising. A business card, a pamphlet or an invoice will work for a service. When using a website for a service, you don't need to have a checkout button.
Q: How do I show that I'm using my service in more than one state?
A: It is usually enough to show that you are advertising out of state. Advertising on a website can be used as a specimen.
Q: I really like my design, why would someone get a boring looking word mark?
A: A word mark usually offers the best flexibility. Since your are protecting the word, or words, you can change your design later on and still have protection. It is also easier to show infringement for a word mark because you would only need to show that the potential infringer is using the same word as your registered mark (in the same class of goods/services) instead of needing to show the same design. The one downside of a word mark is that protection only extends to the words and not to any specific stylization or design elements. You can also get a design plus words mark. A design plus words mark protects the exact combination of words and design. But keep in mind that for a design plus words mark your specimen has to show the exact combination of design and words of the mark you registered. If you later decide to redesign your mark, you can lose your mark when it is time to renew. You need to apply for a new registration to protect your redesigned mark. We usually recommend filing at least a word mark, and then add another registration for the design plus words.
Q: What if my logo doesn't have any words?
A: You can apply to register a logo as a design mark. A design mark has a logo or other type of graphic without any wording. This allows you to protect a specific format or combination of colors.
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