Shedding Light on Proper Use of Trademark Specimens

By Kathleen Hearne Gaisford

06/19/2009

During the life of a trademark there are periodic requests for specimens by the USPTO. Deciding what may or may not comprise an acceptable specimen can at times be confusing and, at others, frustrating.

A specimen is not just an example of the mark. It represents your proof of use. It helps to maintain your rights in your registration. A specimen should show the mark as currently used in commerce in connection with the goods or services on the registration. When submitting a specimen, whether your IP professional located the specimen or you provided one, you should definitely check your use against the goods or services on your registration. You should consider deleting any goods on which the mark is not being used , thus keeping a healthy mark strong.

A specimen can take many forms from labels to internet displays. Listed below are some of the common types of specimens.

• Labels and Tags include hang tags, container labels, clothing labels, etc.;
• Stampings include metal stamps, rubber stamps use on goods or packaging, stamps using ink and stencil;
• Commercial Packaging is any type of commercial packaging that is normal for the goods as they move in trade;
• Displays Associated with Goods are displays that are associated directly with the goods offered for sale usually comprised of point-of-sale material, such as banners, window display, menus, and the like. Folders and brochures that describe the good or serve as advertising literature are not “displays”;
• Catalogs are accepted as specimens so long as it includes a picture of the goods, shows the mark near the picture and has information on how to order the goods;
• Electronic Displays are web pages displaying the product, the mark in connection with the goods, and, most importantly, a means for purchasing the goods; and
• Manuals: instruction manuals packaged with the goods and showing the mark are acceptable.

Unacceptable specimens include advertising material, drawing or picture of mark, and package inserts (which may constitute advertising).