If you have applied for federal trademark registration, United States Patent and Trademark Office ("USPTO") will require specimens that demonstrate trademark use associated with the goods or services identified in your trademark registration application. The widespread misunderstanding of what is bona fide trademark use leads to frustration when providing proof of trademark use (specimen), which is necessary to obtain and maintain a federal trademark. This post is meant to address the most common issues with trademark specimens.
First, the specimen must demonstrate how the trademark is used in interstate commerce. That means the specimen must show how the trademark is used in association with a good or service that has been sold between citizens of different states, the U.S. and a foreign country or U.S. territory, or another type of commerce regulated by Commerce.
Second, The USPTO wants to see that the trademark is being used as a trademark, not as a design. A trademark is a source indicator for goods or services. As such, an applicant should provide a specimen that shows the use of the trademark where a consumer would typically look to find the source of a good. The trademark does not necessarily need to be affixed upon the good but must be used in a manner that distinguishes the supplier of the source of the good from others.
1. MUST SHOW TRADEMARK USE, NOT JUST USE
If a user generally looks at the packaging that's where the trademark should be placed.
a diamond ring would not have a trademark on it; the box would display the trademark
a t-shirt displays a design on its front; the origin is indicated either on the inside collar or the lower cuff because that's where you would look to see who either designed it or distributed it (If Hanes is inside the collar, they made the shirt)
2. TRADEMARK is a TRADE NAME
A trademark can't be merely a trade name. It must be associated with a good or service, not just the name of a company or a vocation.
An envelope showing the trade name on the return address is not an acceptable specimen because there is an assumption that the trademark is the name of the business.
3. LACK OF PROMINENCE OF MARK
A trademark specimen should never show the use of the trademark where the trademark is written in the same manner as the remainder of the sentence because the USPTO will consider prominence in determining trademark use.
Trademark use is not indicated when the trademark is buried in the middle of the text describing the goods in bold font, because the other matter was also in bold font.
A mark may appear more prominent when the specimen:
presents the mark in larger font size or different stylization or color than the surrounding text;
places the mark at the beginning of a line or sentence;
positions the mark next to a picture or description of the goods; or
uses the "TM" designation with the applied-for mark (however, the designation alone does not transform a mark into a trademark if other considerations indicate it does not function as a trademark).
4. SPECIMEN SHOWS DIFFERENT TRADEMARK
The specimen must depict the trademark identically to how it is represented in the trademark application. Identically. The same. If a drawing contains punctuation, the elements of punctuation are presumed to be part of the mark. Thus, if there is punctuation in the mark on the drawing, the punctuation must also appear on the specimen or the drawing is not considered to be a substantially exact representation of the mark as used in commerce. If deletion of the punctuation from the drawing does not alter the commercial impression, the drawing may be amended to match the specimen. If removal of the punctuation changes the commercial impression, i.e., constitutes a material alteration, the applicant must submit a substitute specimen to match the original drawing.
Trademark drawing shows, "ALL THE KING’S MEN," and the mark on the specimen is ALL THE KING’S MEN, the mark on the drawing is not a substantially exact representation of the mark as used in commerce.
5. DON'T USE ® ON A SPECIMEN
™ is the proper designation for common law trademarks. A trademark owner may only use ® once a federal trademark registration is actually issued and may only be used for the goods or services listed in the federal trademark registration.
Using ® in association with a mark first filed on an intent-to-use application that is currently in use. ™ should be used until the trademark is registered on the Primary Registry.
Using ® for a trademark that has issued for winery services on wine products. Trademark registrations are limited to the goods identified in the trademark application.
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at email@example.com. More information can be found at https://ahajiamos.com.