Business Law Blog

Understanding What An Acceptable Specimen Of Use Is According To The USPTO

Posted by Amanda Butler Schley | May 20, 2024 | 0 Comments

When it comes to trademarks, providing a proper specimen of use is crucial. Whether it is submitted with an actual use application or an intent to use application, the specimen must demonstrate the mark's connection to the specific goods or services listed on the application. Without a valid specimen, the application could face challenges. Trademark specimens of use play a vital role in the trademark application process. These specimens must adhere to strict USPTO guidelines to show how the mark is utilized in commerce. Understanding the importance of a well-prepared specimen can make a significant difference in the success of a trademark application. To learn more, or to seek assistance with selecting appropriate specimens of use to accompany your own application for trademark registration, schedule a consultation with a Louisiana trademark registration attorney from Business Law Group today by calling (504) 446-6506.

Specimen of Use and Its Purpose and Importance

When it comes to trademark applications, the specimen of use plays a crucial role by providing tangible evidence that the mark is being used in commerce in connection with specific goods or services. The specimen of use is a snapshot that clearly demonstrates to the United States Patent and Trademark Office (USPTO) that the mark is actively being utilized in the marketplace. A well-prepared specimen is not merely a formality, but a vital component that can make or break a trademark application. A strong, compliant specimen of use not only meets the USPTO's stringent guidelines but also reinforces the mark's association with the goods or services it represents. By submitting a specimen of use that aligns with the USPTO requirements, applicants increase their chances of successfully registering their trademark.

What Is a Trademark Specimen of Use?

The USPTO explains that a trademark specimen of use shows how the applicant is using the mark in the “real” world, and in the ordinary course of their business. In the realm of trademark law, the specimen of use acts as a tangible representation of the mark's commercial presence. The specimen provides examiners with concrete evidence of how the mark is used in the marketplace, validating the applicant's claim to exclusive rights over the mark in connection with the specified goods or services.

Use in Commerce

In trademark law, a specimen of use refers to tangible evidence that demonstrates how a trademark is utilized in commerce. This evidence showcases the actual connection between the mark and the goods or services it represents. To successfully register a trademark with the USPTO, the applicant must provide specimens that prove the mark's active presence in the marketplace. The specimen must accurately display the mark as it appears on or in connection with the products or services being offered.

Intent To Use

For intent to use applications, the specimen of use holds particular importance. While the mark might not be actively used in commerce at the time of application, the specimen submitted with the statement of use, generally within the first six months after the notice of allowance has been received, serves as confirmation that the applicant is now actively using the mark in interstate commerce.

Goods vs. Services: What Are the Differences in Specimen Requirements?

Goods are generally physical or digital items on which the mark can be visually represented, on the packaging if not on the item itself. Services, by contrast, are generally acts or functions performed by the business, and are less susceptible to this kind of direct labeling - visually representing the trademark for a consulting service on the act of giving advice, for instance, could easily present some conceptual difficulties. For these reasons, the USPTO applies slightly different criteria for acceptable specimens of use for goods vs. services.

Acceptable Specimens for Goods

When it comes to goods, acceptable specimens must clearly display the trademark in connection with the products offered. Generally speaking, examples of appropriate specimens for goods might include:

  • Labels affixed to goods or containers

  • Shipping or mailing labels on goods or containers

  • Tags or labels showing trademark information like UPC bar codes

  • Trademark stamping on goods, containers, or labels

  • Display on the normal commercial package for the goods

Acceptable Specimens for Services

For services, specimens should demonstrate use of the mark in connection with the advertisement or sale of services. Examples of specimens frequently accepted by the USPTO in connection with service marks may include:

  • Advertisements

  • Marketing materials that display the mark

  • Photographs of signage

  • Webpages showcasing the services offered

General Rules for Understanding Trademark Specimens of Use for Goods vs. Services

While goods require physical representations like labels or package displays, services can be showcased through advertising materials and online presence. Both types of specimens play a critical role in demonstrating the active use of a trademark in commerce, strengthening its association with specific goods or services.

What Happens if the Specimen Submitted With the Statement of Use Is Not Accepted?

If the specimen submitted with the statement of use is not accepted, the USPTO will issue an office action detailing the reasons for rejection. The applicant will then have the opportunity to respond to the office action and submit a new specimen for consideration. Failure to address the issues raised in the office action may result in the abandonment of the application. The applicant may wish to consult with an experienced trademark attorney before resubmitting their trademark specimen of use to ensure compliance with their requirements.

Overcoming a Specimen Refusal

Establishing and presenting ample evidence is crucial to overcome a specimen refusal after submitting a Statement of Use. If the examining attorney disagrees, options include appealing the decision, submitting new specimens, or requesting an extension of time.

Submitting a Replacement Specimen

Submit new specimens that were both in existence and used before the expiration date of the statement of use filing. Another option may be filing for an extension of time before the initial expiration date to submit a new statement of use with new supporting specimens.

Need Help With a Trademark Application and Specimen Refusal?

Ensuring that a specimen of use meets the USPTO requirements, is crucial for a successful application for trademark registration, whether the mark in question is applied to goods or used in connection with services. Understanding these requirements can make it easier to ensure the specimen submitted will be appropriate, and may also assist in responding to a USPTO office action in the event that the initial specimen of use is rejected. Options such as appealing the decision, providing new specimens, or requesting an extension are available to navigate this process effectively. Submitting replacement specimens that were in use before the expiration date or filing for an extension can strengthen the application. For experienced guidance on handling specimen refusals and optimizing your trademark application, consult with the business and trademark attorneys at Business Law Group by calling (504) 446-6506 today.

About the Author

Amanda Butler Schley

Ranked as a Top Rated Business and Commercial Attorney, I have more than a decade of experience representing boutique hotels, family-owned businesses, privately owned restaurants, breweries, artists, executives and entrepreneurs.


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Business Law Group is a boutique business services law firm in New Orleans, Louisiana. Our focus is on understanding the legal pitfalls of your business and industry, as well as the secrets to maximizing your legal leverage at every opportunity and in every negotiation. We work selectively with clients that aren't ready for the overhead expense of an in-house general counsel, but understand the advantages of having a trusted legal advisor on their team. Amanda Butler has been ranked as a Louisiana SuperLawyer, New Orleans Top Lawyer, Best Lawyers, and in Leaders of Law.