Trademark Specimen – How To Do It Right (But Seriously, Talk To a Lawyer)
It’s been a while since I’ve posted, so it’s high time I post yet another short blog entry that virtually no one will read! Let’s talk about trademark specimens.
With trademark clients, I find that I often need to explain the trademark use requirement. One aspect of “use” is that you must be selling goods in interstate commerce. But another aspect is how the mark is being used. To prove to the USPTO that you’re using a mark, you have to, at some point, submit a trademark specimen. With an actual use application, you do this at the outset, while with an intent to use application you do this when you submit your statement of use once the mark is approved for registration and you’ve begun to actually use it. Often, and especially among the LegalZoom crowd, the specimens submitted are completely defective, which jeopardizes the entire registration and puts you in a weak position when it comes to enforcing your trademark rights. (How strong is your mark if anyone can cancel it because you screwed up registering it?)
So what does a valid trademark specimen look like? Let’s take a look.
Goods Trademark Specimens
The USPTO typically accepts the following specimens for goods:
- A photograph of the product showing the mark directly on the product (e.g., the bottom of a coffee mug)
- Product labels and tags showing the mark (e.g., the label on a t-shirt)
- Product packaging showing the mark (e.g., detergent soap packaging)
- Signage used in a product display at a store (e.g., a photograph of the display)
- A webpage showing or describing the product near the mark and with purchasing information (e.g., a webpage showing a photograph of a computer laptop, the mark for the laptop appearing above the photograph, the price appearing below the photograph, and a shopping cart button/link appearing on the page)
- For downloadable software, copies of the instruction manual and screen printouts from (1) web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, (2) the actual program that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program
The key here is to have your mark used in close association with the goods so that someone looking at those goods can identify the source of those goods. While the list above (sourced from the USPTO’s website) provides some good examples, it is not exhaustive. For example, while things like advertising materials, invoices, or other materials used in the ordinary course of business that bear your mark are generally insufficient as trademark specimens to prove use for goods, an invoice that enumerates a list of goods sold where the goods are identified by the mark would be just fine. What the USPTO is trying to stop you from doing is submitting a trademark specimen with letterhead bearing the mark, because in that context the mark would not be helping a consumer identify the source of the goods that the mark is identifying (e.g., if you are using a mark as a brand of pens, and you submit an invoice where the mark appears at the top, no one would have any idea that the mark has anything to do with your pens).
If there’s any takeaway here, it’s that you need to make sure your trademark specimen for goods closely ties the mark to the goods you’re selling, and if you’re going to submit a website where the mark is used to describe your goods, then make sure you also include purchasing information.
Services Trademark Specimen
Services are a bit different in nature than goods, and so the trademark specimen requirement is a bit different. Most importantly, a consumer should be able to look at your trademark and be readily able to associate it with the services that you are providing. According to the USPTO’s website, the following examples are valid trademark specimens:
- Print or Internet advertising
- Brochures and leaflets
- Menus for restaurants
- Business cards and letterhead
- Marketing and promotional materials
- A photograph of business signage and billboards
- A photograph of a musical band performing with the band’s name displayed during the performance (e.g., on the band’s drum)
Where trademark specimens consisting of advertising, marketing, and promotional materials must show a direct association between the mark and the services. But if your mark itself references the services, the specimen would show a sufficient direct association (e.g., ABC MEDICAL for a medical clinic).
In general, trademark specimens for services can be quite different from those submitted for goods because services are inherently more nebulous than an actual, physical good. But a consumer should still be able to associate your mark with the services you’re providing. For example, if you were providing financial planning services, and you submit a trademark specimen consisting of a photograph of a stress ball bearing your mark that you hand out to potential clients, that specimen would not be sufficient as a specimen showing that you’re providing financial planning services.
The general takeaway for services trademark specimens is that you need to make sure your trademark specimen closely ties the mark to the services you’re providing.
What if the specimen I already submitted is crap?
There are two versions of this question. In the first version, you submitted a bad specimen, and your trademark registered anyway. In the second version, you received a specimen refusal before the trademark registered.
In the first scenario, the bad trademark specimen can end up costing you money and a headache because at some point you could be forced to prove that you were indeed using the mark as of the date of first use in commerce that you indicated in your trademark registration. The more time that passes the more difficult it might be to prove these facts. On the other hand, if a mark is asserted against you and you can see that the trademark specimen is defective in some way, that’s a good cue for you to investigate whether the party asserting the mark was actually using the mark as of the date asserted in the registration.
The second scenario is much easier to handle. When you receive a trademark specimen refusal, the USPTO just wants you to submit a new and improved specimen that meets the requirements discussed above. Easy peasy.