Use it or Lose it: What USPTO Looks For in Trademark Specimen

     If you’re looking to trademark something in the United States, whether it’s your company name, a company-specific word, phrase, or design, or any other proposed trademark, the USPTO requires you to “use it or lose it”. This is done through USPTO’s specimen requirement. What the specimen requirement means is that you’ll need to prove:

·         That you are currently using the proposed trademark in a commercial marketplace; or

·         That you intend to use the proposed trademark, and then prove that you are using it within six (6) months of registration

    The Use-Based Application & Proof of Use

    In regards to the first instance (a trademark already being used in a commercial marketplace), you’ll be filing what’s known as a section 1(a) use-based application,

    In most situations, the USPTO will not award the rights of a proposed trademark in the field of goods and services without first seeing proof of use. The exception to this requirement is the intent-to-use 1 (b) application (the second instance above). However, proof is still needed within six months of registration even with this particular application.

    The Specimen

    In order to prove that you are using your proposed trademark, you’ll need to provide the USPTO with a specimen. Now, what exactly is a “specimen”?

     Simply put, a specimen is what consumers see when they are purchasing goods and/or services from you. It is a concrete example of how your proposed trademark is being used in the marketplace. The specimen that you provide as proof of use will vary, dependent upon whether you provide goods, services, or a combination of both to marketplace consumers.

    Goods

    For goods-based commerce, the specimen for a trademarked good will often be a physical tag or label that displays the proposed mark. Please note: You must provide the USPTO with the actual label used on the actual good(s) – a mock-up or some other digitally-altered specimen won’t be sufficient or acceptable.

    Other unacceptable specimens for goods include advertising materials, price lists, invoices, shipping documents, announcements, press releases, and business cards. Moreover, the specimen must demonstrate that the relevant consumer can make the commercial link between the mark itself and the particular good(s).

    Services

     For service-based commerce, the specimen is often a trademark being used in providing the service itself (like a header or a byline), or in advertising the service itself. For example, an acceptable specimen for a service may include a photograph of the signage of your business establishment where the service(s) is being offered, a brochure on the service(s) provided, or an advertisement for the service(s) readily available on websites or in print. Please note: The specimen must not only display the mark, but also connect the mark to the service. It cannot merely be a display of the mark alone.

     You’ll be happy to know that only one acceptable specimen is required under either class (use-based and/or intent-to-use) to which you are applying.  For instance, if several various goods are listed within the same class on your application, you only need to submit one specimen.

     And remember: Failure to use your trademark (proposed or actual) in association with the goods and services claimed on an application can delay the success of your registration, and can even result in the cancellation of your application. When it comes to trademark registration, honesty is the best policy.  

     The Witmart Difference

     We know that the various regulations and standards imposed by the USPTO can be intimidating, and it often takes time away from running a successful company. Witmart is here to help you navigate this process, which means you’ll not only save time, but you’ll avoid the headaches of trademarking delays and cancellations that only hinder you from your growing business.