When considering proof of use in the US, the first topic to address is when specimens of use are required. The answer is twofold.

First, a specimen of use is required during the trade mark application process, subject to one exception. During the direct US application phase, if your application is based on ‘use in commerce’ (actual use application) or ‘intent to use’, you are required to submit a specimen (but at different times during the process). If the application is based on actual use, the specimen is submitted upon initial filing of the application, whereas if the application is based on intent to use, the specimen is submitted either: (1) if before the application is published for opposition, by filing an Amendment to Allege Use; or (2) if after the Notice of Allowance is issued, by filing a Statement of Use. However, if the US application is based on a foreign application or foreign registration, or filed under the Madrid Protocol, you are not required to submit a specimen of use in order to register your mark.

Second, a specimen is required during the trade mark registration renewal process, which constitutes either a Section 8 Declaration of Use (for direct US registrations or those based on a foreign application/registration) or a Section 71 Declaration of Use (for Madrid Protocol-based registrations). In this second case, there are two deadlines to be aware of:

• First filing deadline: a Declaration of Use with specimens of use must be filed on or within the year preceding the sixth anniversary (ie, between years five and six) of the date of registration in the US, or in the six-month grace period immediately following, with payment of the grace period surcharge.
• Subsequent filing deadline: one must file a Declaration of Use with specimens of use within the year preceding the end of each 10-year period after the date of registration in the US, or in the six-month grace period immediately following, with payment of the grace period surcharge.

What is a specimen of use?

But what is a specimen of use anyway? A specimen is a sample of your trade mark as used in commerce. It is real-life evidence of how you are actually using your trade mark in the marketplace with the goods or services in your application or registration maintenance filing. It is what consumers see when they are considering whether to purchase the goods or services you provide in connection with your trade mark.

For goods, a specimen shows your trade mark as actually used in commerce with your existing goods in a way that directly associates the trade mark with the goods. For example, a specimen could be a label or tag attached to your goods that shows your trade mark; a product container or packaging showing your trade mark on the packaging; or a website displaying your trade mark where your goods can be purchased or ordered.

For services, a specimen shows the trade mark as actually used in commerce with your existing services in a way that directly associates the trade mark with the services. For example, a specimen could be an advertisement, brochure, website printout or other promotional material that shows your trade mark used for the services; business signs where the services are rendered showing your trade mark; or a service vehicle showing your trade mark.

While use is required for all goods and services listed in an application, only one specimen per class is required as evidence of such use. However, the United States Patent and Trademark Office (USPTO) may ask for additional specimens so it can properly examine your application or registration maintenance filings (eg, the USPTO audit programme).

Specimens for goods

Drilling down on specimens of use for goods, a mark shall be deemed to be in use in commerce when: (1) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale; and (2) the goods are sold or transported in commerce. There must be bona fide use of a mark in the ordinary course of trade: ‘token use’, or use made solely to reserve rights in a mark, is not acceptable (in reality, an applicant may find that such token use may be accepted during prosecution, but this type of use could make the registration vulnerable if contested in the future).

People often ask whether a web page (or electronic display) can be an acceptable specimen of use. The answer is generally yes, if it meets certain requirements. A web page that displays a product can constitute a “display associated with the goods” if it: (1) contains a picture or textual description of the identified goods; (2) shows the mark in association with the goods; and (3) provides a means for ordering the identified goods (eg, a shopping cart feature). In these cases, the mark must be displayed in a manner in which customers will recognise it as a mark. Also, if no photos of goods are shown, a textual description is generally acceptable if it conveys the actual features or inherent characteristics of the goods.

“The mark must demonstrate a direct relationship between the mark and the services”

Another question that often comes up is how to deal with specimens of use for goods where it is impracticable to place the specimen on or show it in association with the goods – for example, providing a specimen related to grain that is sold in bulk (from a silo, etc). In these circumstances, the record must indicate that the nature of the goods makes it impossible to show use via tags, labels, containers or displays. If traditional ways to show use are found to be impracticable, acceptable alternatives include an invoice, bill of lading or shipping document that shows the mark for the goods.

Specimens for services

When it comes to specimens of use for services, a mark shall be deemed to be in use in commerce when it is used or displayed in the sale or advertising of services and the services are rendered in commerce. The mark must demonstrate a direct relationship between the mark and the services. The mere announcement of a future service is not evidence of use as a service mark; in other words, the service must already have been rendered prior to filing a use-based application.

Reasons for refusal

These are the common reasons that we see for a specimen of use to be refused:

• For logo design marks, the specimen does not show the trade mark as depicted in the drawing. For example, the trade mark is illegible or not shown clearly, only part of the trade mark is shown, or a variation of the trade mark in the specimen is shown rather than the exact trade mark. If there is a slight variation between the original logo design drawing and that shown in the specimen, the drawing can be amended, but only if such an amendment would not constitute a material alteration of the mark.
• The specimen does not show trade mark use with the goods or services as described in the application. For example, an application identifies T-shirts as the goods, but the specimen shows the trade mark advertising a custom T-shirt printing service.
• The specimen does not show your own use of the trade mark. As an example, the specimen is a press release sent exclusively to news media or is a printed article resulting from that release. Publicly available press releases are acceptable to show use for services, but not goods.
• The specimen is not in actual use in commerce. Common examples include a digitally created or altered image or mock-up, pre-sale orders for goods not yet available, or a web page that does not include the URL and date accessed/printed.
• The specimen is not an appropriate type for the goods and services. An example would be a web page for a good with insufficient ordering or purchasing information.

Tips for submitting specimens

The following are practical tips for submitting specimens of use either during the initial filing (actual use applications), during prosecution (intent to use applications) or upon renewal (all registrations). Following these tips can help avoid the headaches associated with specimen refusals by the USPTO:

• Review the client-provided specimen and discuss what it is with the client.
• Ask if better specimens are available if what is presented is marginal.
• Provide the most legible, clearly acceptable specimen you can up-front.
• Use the entire point-of-sale display, not a cropped, retouched picture of the goods from a web page.
• If not immediately clear, highlight or describe where the mark appears and where the goods or services appear or are referenced. Trade mark examining attorneys will appreciate this guidance.
• Avoid submitting brochures (advertising) as specimens for goods.
• Consider providing multiple specimens per class (not required, unless audited, but this can increase chances of a suitable specimen being found).
• If filing close to the six-month filing deadline for a Statement of Use, file an “insurance” extension alongside in case there are issues with the specimen. This extension gives applicants an additional six months to prepare new specimens, put them into use and submit them to the USPTO for approval.
• If there is a matter on the specimen that is not in English, the trade mark examining attorney may require that the applicant submit a translation of the matter to permit proper examination.

Overcoming a refusal

If, despite all of your best intentions and care in filing, you still receive a refusal from the USPTO, have no fear. The following are high-level thoughts on dealing with the refusal and submitting a proper response.

First, submit a verified specimen or verified substitute specimen. Choose this option if: (1) you initially omitted the required specimen from your application; or (2) a substitute specimen was suggested as a response option in the USPTO refusal. Please note that the “verification” means that when submitting the substitute specimen, the applicant must include an affidavit or declaration verifying that the substitute specimen was in use in commerce at least as early as the filing date of the application (actual use) or when the Statement of Use was submitted (intent to use).

You may change your filing basis (from actual use to intent to use) or withdraw your application from actual use. Choose this option if: (1) you have an actual use application in which you omitted the required specimen; or (2) you included the specimen with your application but it was refused.

Or, submit a proper verification of your specimen or substitute specimen. Choose this option if you previously submitted a specimen or substitute specimen that was not verified but was otherwise acceptable.

“The USPTO may ask for additional specimens so it can properly examine your application or registration maintenance filings”

Other options to consider:

• Provide the URL and the date you accessed or printed the web page in your submission. Choose this option if your specimen was refused because your submission appeared to be a web page but did not include the URL and date you accessed or printed your web page.
• Submit evidence that the specimen was used with your goods at their point-of-sale. Choose this option if your specimen was refused because it is print advertising material but was identified as a display for your goods.
• Submit a clarified and true copy of the originally submitted specimen. Choose this option if your specimen was refused because it did not clearly show your trade mark (such as if the original specimen is illegible).

Summing up, it’s fair to say that proving trade mark use and the specimen of use requirement raises lots of questions for our foreign associate partners. However, with a little effort on the front-end to understand the dos and don’ts associated with proper specimens, you can help guide clients to provide materials that will pass USPTO muster so that application and renewal filings can progress with few headaches. Good luck!

Eric Mills is a Patent, Trade Mark and Intellectual Property Attorney at Maynard Nexsen, North Carolina, US
emills@maynardnexsen.com

IIlustration: Shutterstock.com

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