For use-based trademark applications filed under §1(a) of the Trademark Act, 15 U.S.C. §1051(a), applicants must submit the application along with one specimen per Class showing use of the mark for the covered goods and services. However, in the course of examining an application, the PTO can issue Office Actions requesting "additional information" needed to properly examine an application under Trademark Rule 2.61(b), 37 CFR §2.61(b) – and such information can include a request for additional specimens. See TMEP §904.01(a) and 37 C.F.R. §2.61(b). The Examining Attorney may also identify one or several specific goods or services in each Class for which additional specimens are required in order to proceed to registration.
It appears from anecdotal evidence that such additional specimen requests from the PTO are on the rise -- particularly for applications covering multiple goods or services within a Class that appear to be unrelated.
As the PTO appears to be increasing the scrutiny given certain use-based applications, we recommend that applicants consider the following when determining whether the way a mark is used will satisfy the PTO's technical specimen requirements: