Submitting a Trademark Application? Five Trademark Specimen Pitfalls and Best Practices

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Gibney Anthony & Flaherty, LLP

Whether you are filing a new trademark application or looking to maintain a registration, understanding trademark specimen best practices is key. A common pitfall when filing your application is failing to provide an acceptable specimen that shows how you use your trademark in commerce. This can lead to your registration being rejected by the United States Patent and Trademark Office (USPTO). Here are five trademark specimen mistakes to avoid and best practices.

What is a Trademark Specimen and Why Do You Need It?

If your application is based on “use in commerce” USPTO will require you to submit a specimen with the application. If you apply for “intent to use,” USPTO will require you to submit your specimen later on as proof of use. This is evidence that shows how you actually use the trademark in connection with your goods or services, in the marketplace. It is important to make sure your specimen shows use of the trademark on the goods or services applied for and otherwise fits USPTO’s requirements or your application can be rejected.

Is a Specimen Required for Foreign Entrepreneurs?

If your application is based on a foreign application or registration, or you filed under the Madrid Protocol, you will not be required to submit a specimen to register your mark. However, you will be required to submit specimens at other required times to maintain your trademark. It is also important to remember that foreign trademark applicants and registrants must be represented before the USPTO by a licensed US attorney.

Five Common Trademark Specimen Mistakes to Avoid

When submitting your specimen, reasons your application may be rejected are if your trademark specimen:

  1. Does not show use of the applied-for trademark with the relevant goods/services
  2. Is not a real example of how you use your trademark in commerce (ex. mock up, printer’s proof, digitally altered image, rendering of intended packaging or a draft website)
  3. Is just a picture or drawing of the trademark or a photocopy of the drawing
  4. Is a webpage that does not include the URL or the date it was accessed
  5. Does not show a functioning trademark or is just ornamentation, identifies the name or pseudonym of a performing artist or author, or uses the title or character from a creative work

Five Best Practices for Your Trademark Sample

  1. Be sure to show your trademark used with the goods or services listed in your application
  2. For goods, show the trademark as it is actually used in commerce – examples include label or tags, product containers/packaging or a website displaying your trademark where your goods can be purchased or ordered
  3. For services, show the trademark as actually used in commerce – examples include advertisements, brochures, website printouts, promotional materials and business signs
  4. Trademarks should be used in a way that is clear to consumers
  5. Avoid digitally altered images and samples

Completing a trademark application and submitting the correct specimen can be challenging. Working with a trademark attorney can help you to avoid pitfalls and help you best protect your brand.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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