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Specimens of Use for a Trademark Application

One problem that new entrepreneurs sometimes face when prosecuting a trademark application is coming up with an acceptable specimen of use for the mark. This arises from a misunderstanding of what a trademark is and how it functions to distinguish goods or services.

 

Keys to Proper Use of a Trademark

Here are several keys to using a trademark correctly and producing an appropriate specimen of use:

Use the Mark ON or IN CONNECTION with the Goods

Displaying a Trademark on LabelFor goods/products, you should think packaging and labels and point of purchase displays of the mark and product together. The trademark on goods should be a label on the product, a tag on the product, container or a display of the mark that associated with the goods at the place where the goods are purchased or the price is shown.

Avoid Displaying a Trademark as Only a Company Name

What can happen? Sometimes the trademark is displayed on a product as a company name. If you are using “Corporation, Inc., Company, or LLC” after your primary use of trademark on a product, then you are probably making a mistake. Use of a company name should be relegated to the fine print or official business correspondence when you are building a brand.

Avoid Using Trademarks as a Perceived Decorative Feature

As another problem, sometimes a trademark is only displayed as a decorative feature on the product and is not clearly a trademark. For example, I often see trademark use problems with apparel brands. The trademark owner may use the name or stylized logo on the front of a shirt or hat. However, this is not used as a “trademark” because it appears to the consumer to be a decorative feature on the shirt or hat.

Instead, with respect to apparel, the trademark should be inserted on a label inside the shirt’s collar as traditionally done, in small print on a shirt sleeve, or on the shirt’s hang tag. At the very least, the trademark should be displayed at the point of purchase such as the shelf space where the apparel are sold or on the order page of a website where the apparel is shown along with a shopping cart feature and a price.

Always Show the Goods with the Trademark

Yet another problem seen with trademarks on goods will revolve around limited use of the mark in advertising rather than on the product itself. Use of a trademark in advertising usually does not meet the requirement for a “connection” between the trademark and the goods. A connection requires the actual goods to be shown in the presence of the mark, which advertising often omits.

Any material, whose function is merely to tell the prospective purchaser about the goods, or to promote the sale of the goods, is unacceptable to support trademark use. Similarly, informational inserts are generally not acceptable to show trademark use.

 

Avoid These Inappropriate Materials as Specimens

  • advertising circulars and brochures
  • price lists
  • announcements
  • press releases
  • listings in trade directories
  • business cards
  • invoices
  • bill heads
  • waybills
  • warranties
  • business stationery
  • Some other unacceptable specimens of use include:
  • A drawing or picture of the mark
  • A company uniform
  • Bags that are not packaging for the product
  • Packaging inserts

All of these above examples often fail the test for a trademark because they do not demonstrate the mark in use “on” or “in connection” with the goods.

Bottom line: Avoid relying on advertising as your only use of a trademark.


Grounds for Rejection of Specimen of UseRejection of a Trademark Application Specimen of Use

The following non-exhaustive list from the Manual of Trademark Examining Procedure reflects examples of problems that may be raised on initial review of specimens:

  • No specimen is submitted;
  • The applied-for mark does not appear on the specimen;
  • The specimen does not show use of the applied-for mark on or in connection with any of the relevant goods or in the sale or advertising of the services;
  • The specimen is not in “use in commerce” (e.g., a printer’s proof of an advertisement for services);
  • The specimen is altered/mutilated/unprintable or illegible;
  • The specimen is merely advertising material for goods;
  • The specimen is merely a picture or drawing of the mark;
  • The specimen is an electronic display associated with the goods (15 U.S.C. §, a printed or web catalog, or web page display for goods), and fails to include ordering information or pricing;
  • The specimen is a non-electronic point of sale display and fails to show use of the mark in a display.

If you receive any of these rejections for your specimen of use in your trademark application, use the guidance above to make corrections and submit a specimen that will be approved. Be sure to claim a correct date of use for your mark based on when such use was in appropriate form.

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