TMEP 904: Specimens
October 2017 Edition of the TMEP
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Specimens are required because they show the manner in which the mark is seen by the public. Specimens also provide supporting evidence of facts recited in the application.
A trademark or service mark application for registration under §1(a) of the Trademark Act must include one specimen for each class, showing use of the mark in commerce on or in connection with the goods, or in the sale or advertising of the services. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a). If an application under §1(a) is filed without a specimen, the examining attorney must issue an Office action requiring the applicant to submit one specimen for each class, with an affidavit or declaration under 37 C.F.R. §2.20 stating that the specimen was in use in commerce at least as early as the filing date of the application. See 37 C.F.R. §2.59(a). The Office action must also indicate registration is refused under §§1 and 45 of the Trademark Act because the applicant has not provided evidence of use of the mark in commerce. See 15 U.S.C. §§1051(a)(1), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a).
In examining a specimen filed with an application under 15 U.S.C. §1051(a), an amendment to allege use under 15 U.S.C. §1051(c), or a statement of use under 15 U.S.C. §1051(d), the examining attorney must refuse registration if the specimen indicates that the goods have not been "sold or transported in commerce." 15 U.S.C. §1127. For example, a webpage for placing pre-sale orders for goods that are not yet available does not show use of the mark in commerce in connection with the goods, even if it otherwise meets the requirements for an acceptable display associated with the goods. See Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989, 991-92 (TTAB 1982) (finding that the goods to be identified by the mark must be in existence at the time of a sale); cf. Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1360, 90 USPQ2d 1301, 1308 (Fed. Cir. 2009) (holding that actual use of the mark in commerce in connection with an existing service is required and that mere preparations to use a mark sometime in the future does not constitute use in commerce); In re Port Auth. of N.Y., 3 USPQ2d 1453, 1455 (TTAB 1987) (finding advertising and promoting telecommunications services before the services were available insufficient to support registration); In re Cedar Point, Inc., 220 USPQ 533, 535-37 (TTAB 1983) (holding that advertising of a marine entertainment park, which was not yet open, was not a valid basis for registration); In re Nationwide Mut. Ins. Co., 124 USPQ 465 (TTAB 1960) (holding that stickers placed on policies, bills, and letters announcing prospective name change is mere adoption, not service mark use). See TMEP §1301.03 regarding use of a service mark in commerce. The Office action must indicate that registration is refused under §§1 and 45 of the Trademark Act because the applicant has not provided evidence of use of the mark in commerce for the identified goods. See 15 U.S.C. §§1051(a)(1), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a).
In an application for registration under §1(b) of the Trademark Act, no specimen is required at the time the application is filed. However, before a registration will issue, the applicant must file an allegation of use that includes one specimen for each class, showing use of the mark in commerce on or in connection with the goods or in the sale or advertising of the services. See37 C.F.R. §§2.56(a), 2.76(b)(2), 2.88(b)(2).
No specimen showing use of the mark in commerce is required in an application based solely on §44 or §66(a) of the Trademark Act, 15 U.S.C. §§1126(d)-(e), 1141f(a). While a §44 or §66(a) applicant must assert a bona fide intent to use the mark in commerce, the applicant is not required to assert actual use in commerce prior to registration. Crocker Nat'l Bank v. Canadian Imperial Bank of Com., 223 USPQ 909 (TTAB 1984); TMEP §§1009, 1904.01(d).
If the nature of a specimen is unclear, the applicant must explain what it is and how it is used.
A photocopy or reproduction of the drawing is not an acceptable specimen. 37 C.F.R. §2.56(c).
Specimens of value should not be filed.
Interested parties, including potential opposers, may view and print images of the specimens in an application or registration file through the Trademark Status and Document Retrieval ("TSDR") portal on the USPTO website at http://tsdr.uspto.gov/. The USPTO does not permit specimens to be removed from the record. Furthermore, once filed, specimens remain part of the record and will not be returned to the applicant. 37 C.F.R. §2.25. This ensures that there is a complete record of the submissions made by the applicant. See 64 Fed. Reg. 48900, 48901 (Sept. 8, 1999), 1226 TMOG 103 (Sept. 28, 1999); see also TMEP §404.
For information regarding specimens for collective trademarks and collective service marks, see TMEP §1303.01(a)(i)(C); for collective membership marks, see TMEP §1304.02(a)(i)(C); and for certification marks, see TMEP §§1306.02(a)(i)(B), 1306.04(c)-(d).